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January 20, 2011

Springy Construction

Two concomitant litigations between Arlington and Brideport over 5,266,050 & 6,521,831, in the same district court, produced different constructions of the same claim term. The later case (Arlington II) construed "spring metal adaptor" ('050) and "spring steel adaptor" ('831) as requiring a "split" that the earlier construction had not. What sprung from construction was noninfringement. Until appeal.

Arlington Industries v. Bridgeport Fittings (CAFC 2010-1025) precedential

Arlington's '050 patent discloses an improved electrical connector that snaps into electrical junction boxes with one hand instead of two. Id. col.1 ll.10-13. A "spring metal adaptor" or "spring steel adaptor" surrounds the leading end of the electrical connector and attaches the connector to the junction box. Id. col.10 ll.28-38.

Arlington alleged that Bridgeport's Whipper-Snap connectors infringed.

Although infringement of the '050 patent was now an issue in both Arlington I and Arlington II, neither party moved to consolidate the cases, and the matters proceeded on parallel tracks. Id.

The Arlington II court construed "spring metal adaptor" to mean a split spring metal adaptor. 2007 WL 4276565, at *8. The court found that the split allows the adaptor to narrow upon insertion into the electrical junction box. Id. at *7 ("[A] necessary feature of the "spring" metal adaptor is that it is 'split.' Without the split, it would not spring."). The Arlington II court construed "spring steel adapter" from the '831 patent as also requiring a split, stating that this term was subject to the same analysis. Id. at *15.

The CAFC acknowledged the "fine line" in claim construction, a fine line that acts like a tripwire to unwary district courts.

This court has often acknowledged the fine line between reading a claim in light of the specification and importing a limitation from the specification into the claim. See, e.g., Decisioning.com, Inc. v. Federated Dep't Stores, Inc., 527 F.3d 1300, 1307-08 (Fed. Cir. 2008); Phillips, 415 F.3d at 1323-24.

Claim 8 of the '050 patent recites a "spring metal adaptor." Consistent with the ordinary and customary meaning of these words, this term imposes the limitation that the adaptor must be made of spring metal. "It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The specification, which acts as "the primary basis for construing the claims," id. at 1315, supports this construction.

In arguing for "split," Bridgeport argued against the disclosure.

Bridgeport alternatively argues that the entire term "spring metal adaptor" should be defined by implication to require a split. This court has, on occasion, supplied a definition by implication, if the specification manifests a clear intent to limit the term by using it in a manner consistent with only a single meaning. See, e.g., Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1303 (Fed. Cir. 2004); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344 (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.").

But only one of four disclosed embodiments employed a split. As to the figures...

While the drawings of the adaptor consistently depict an incomplete circle, drawings in a patent need not illustrate the full scope of the invention. MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007) ("[P]atent coverage is not necessarily limited to inventions that look like the ones in the figures. To hold otherwise would be to import limitations onto the claim from the specification, which is fraught with danger."). Moreover, "even where a patent describes only a single embodiment, claims will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words of expressions of manifest exclusion or restriction." Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1381 (Fed. Cir. 2009); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004). The '050 patent does not show a clear intent to limit the claims to "split" embodiments.

Claim differentiation pointed away from limitation import, as did the prosecution history.

Importantly, importing a split limitation improperly discounts substantive differences between the claims. Such differences can be a "useful guide in understanding the meaning of particular claim terms." Phillips, 415 F.3d at 1314; see Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1381 (Fed. Cir. 2006) ("[C]laim differentiation takes on relevance in the context of a claim construction that would render additional, or different, language in another independent claim superfluous . . . .").

[T]he applicant amended claims 1 and 13 to add a "less than a complete circle" limitation to the "spring metal adaptor" term. J.A. 1010. This action preceded the allowance of the claims, suggesting that both the inventors and the PTO understood the unmodified term to encompass unsplit adaptors. See Phillips, 415 F.3d at 1318 ("[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention.").

Because the Arlington II court misconstrued the "spring metal adaptor" and "spring steel adapter" terms by importing a "split" limitation from the specifications into the claims, this court vacates the grants of summary judgment and remands.

Vacated and remanded.

Judge Lourie dissented over '850.

One of the most difficult tasks in adjudicating patent cases is interpreting patent claims. We have propounded a variety of "rules" for doing so, such as that claims should not be limited to preferred embodiments, LiebelFlarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (quotation omitted), claim terms are interpreted in light of the specification of which they are a part, Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985), and claims are interpreted according to their plain meaning, Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc).

But the basic mandate is for claims to be interpreted in light of the specification of which they are a part because the specification describes what the inventors invented. Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed. Cir. 1996). The specification is the heart of the patent. In colloquial terms, "you should get what you disclose."

Very slippery slope, in colloquial terms, and wrong. You get what you claim. Judge Lourie backs up his legally bankrupt position with specious logic.

The fine distinctions we often make concerning what is disclosed in a specification arise of course from how the inventors describe aspects of their invention. They describe embodiments of the invention, preferred embodiments, specific examples, sometimes using language broader than expressed in the claims to describe embodiments, and finally, in frequent boilerplate, indicate that the invention isn't to be limited to what is expressly disclosed (as if they were unable to describe anything else they actually invented). Questions then arise as to whether an invention is limited to a preferred embodiment, or to the disclosed embodiments, or to what the specification in some language indicates is part of the invention.

But, at bottom, we are reading a patent specification to see what the inventors invented, what they disclosed, and how they conveyed that information. A patent is a teaching document. In almost all cases, the inventors, and their patent solicitors, knew what was invented and generally disclosed their invention in competent language.

Unfortunately, the nature of our adversary system often causes those patents to be asserted against someone engaged in activity not contemplated by the inventors as part of their invention. So the patent is used as a business weapon against such parties, and litigation counsel attempt to fit a square peg into a round hole, or, in other words, to fit into the claim language what the inventors never contemplated as part of their invention.

In this case, the inventors made clear in the specification of the '050 patent that the spring metal adapters in their invention have an opening that prevents the adaptors from forming a complete circle. The result that the panel majority arrives at here, on remand, could be that Bridgeport might be held to be an infringer of a patent that clearly indicates that there is a split in the adaptor, by making or selling an adaptor lacking such a split. That is not a result that the patent law ought to protect.

The problem in claim interpretation is thus our focus on our muddy, conflicting, and overly formulaic rules, see, e.g., KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (warning against the use of rigid rules), and Bilski v. Kappos, 130 S. Ct. 3218, 3226 (2010), when the real task of claim interpretation is to read the specification and determine what the inventors meant when they used the language they did. Obviously the claims define the scope of protection accorded the owners of a patent. Phillips, 415 F.3d at 1312. But in construing the claims we should avail ourselves of the knowledge we glean from the patent specification to see what the inventors disclosed as their invention. The bottom line of claim construction should be that the claims should not mean more than what the specification indicates, in one way or another, the inventors invented.

Judge Lourie completely ignores §112 ¶1 as circumscribing overly broad claims. Judge Lourie's dissenting opinion is the result of muddled thinking, and traverses blackletter law.

The majority got the right colloquialism: "the name of the game is the claim."

The concurrence-in-part and dissent-in-part characterizes the specification as the "heart of the patent" and, using "colloquial terms," states that "you should get what you disclose." This devalues the importance of claim language in delimiting the scope of legal protection. "Claims define and circumscribe, the written description discloses and teaches." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010) (en banc). To use a colloquial term coined by Judge Rich, "the name of the game is the claim." Giles S. Rich, The Extent of the Protection and Interpretation of Claims-American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499, 501 (1990). Indeed, unclaimed disclosures are dedicated to the public. Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1051 (Fed. Cir. 2002) (en banc).

Posted by Patent Hawk at January 20, 2011 4:50 PM | Claim Construction

Comments

The minor matter that two different judges ruled on these cases has nothing to do with this.

;-)

692 F.Supp2d 487 : Judge Christopher C Conner
615 F.Supp2d 337 : Judge A. Richard Caputo

Looks like Caputo's version is caput.

Posted by: Pedantic Pete at January 20, 2011 7:22 PM

"They describe embodiments of the invention, preferred embodiments, specific examples, sometimes using language broader than expressed in the claims to describe embodiments, and finally, in frequent boilerplate, indicate that the invention isn't to be limited to what is expressly disclosed (as if they were unable to describe anything else they actually invented)."

I kno right?

What is a very slippery slope is allowing claims on things relying on something like this. 112 1st and 2nd help to police this but there is room for an additional regulation down the line.

"Judge Lourie completely ignores §112 ¶1 as circumscribing overly broad claims."

I kind of agree, and indeed it could be the rather weak enforcement of 112 1st in this country that is really to blame.

But, that said, if we're going to keep 112 1st how it is, then the way we interpret claims could surely use his suggestion.

Posted by: 6000 at January 21, 2011 12:45 PM

That said, I'm not convinced that adopting Lourie's rule would change anything in this case.

Posted by: 6000 at January 21, 2011 12:47 PM