ERBE and Conmed v. Canady (CAFC 2008-1425, -1426) precedential

Claim construction is a question of law that is reviewed de novo. Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326 (Fed. Cir. 2007). We begin our claim construction analysis with the words of the claim. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Claim terms are generally construed in accordance with the ordinary and customary meaning they would have to one of ordinary skill in the art. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). "[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313. In addition to considering the specification, courts should consider the relevant prosecution history of an asserted patent. Id. at 1317. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of the prosecution, making the claim scope narrower than it would otherwise be." Id. Mindful of these principles, we turn to the disputed claim term "low flow rate."

The claim language itself (claim 1) had "low flow rate" at "less than about 1 liter/minute." The district court followed that, along with other baggage from the spec and prosecution history. In the face of non-infringement, ERBE wanted a broader construction. ERBE argued claim differentiation and surplusage for support. This led to the below quotation, which, translated into English, reads: claim construction may employ the use of Ouija boards.

Generally, "[a]ll the limitations of a claim must be considered meaningful." Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991) (citing Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532-33 (Fed. Cir. 1987)). However, "no canon of [claim] construction is absolute in its application." Renishaw PLC v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). Claim differentiation may be helpful in some cases, but it is just one of many tools used by courts in the analysis of claim terms. See, e.g., Nystrom v. Trex Co., Inc., 424 F.3d 1136, 1142-43 (Fed. Cir. 2005). Similarly, surplusage may exist in some claims. See, e.g., Pickholtz v. Rainbow Tech., Inc., 284 F.3d 1365, 1373 (Fed. Cir. 2002). As we have stated, "[a]ll rules of construction must be understood in terms of the factual situations that produced them, and applied in fidelity to their origins." Modine Mfg. Co. v. U.S. Int'l Trade Comm., 75 F.3d 1545, 1551 (Fed. Cir. 1996).

We thus reject ERBE's arguments with respect to "claim differentiation" and "surplusage." In this case, the prosecution history establishes that the Canady prior art patent was distinguished based on this "low flow rate" limitation and thus this term as it appears in the asserted claims is limited. See PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1366-67 (Fed. Cir. 2007) (concluding arguments distinguishing the prior art patent suggested meaning of disputed claim terms when applying Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir. 1995)); Southwall Techs., 54 F.3d at 1579 ("[A]rguments made during prosecution regarding the meaning of a claim term are relevant to the interpretation of that term in every claim of the patent absent a clear indication to the contrary."). Because the inventors clearly and unambiguously disclaimed such flow rates that produced laminar jets and limited the claims to flow velocities less than 19 km/hr to overcome unpatentability, we agree with the district court's claim construction with respect to "low flow rate."

Affirmed.