In 2002, Mangosoft filed suit against Oracle and accused Oracle's Real Applications Clusters ("RAC") software, sold in conjunction with its 9i and 10g database software, of infringing a total of 38 claims of both the '377 patent and a related patent. Oracle counterclaimed for a declaratory judgment of invalidity, unenforceability, and non-infringement. In 2004, the district court construed several disputed claim terms after holding a Markman hearing. With respect to the term "local," it held that

the word "local" when used to modify a computer device means a computer device (e.g., a hard drive) that is directly attached to a single computer's processor by, for example, the computer's bus.

Mangosoft, Inc. v. Oracle Corp., No. 02-CV-545, slip op. at 20 (D.N.H. Sept. 21, 2004) ("Claim Construction Opinion") (noting additionally that a hard disk "that is 'local' to one computer may also be shared with, or accessed by, other computers on the network"). The district court distinguished "local" memory devices from "shared," "networked," or "remote" memory devices, and rejected Mangosoft's request to construe "local" to "simply requir[e] a computer memory device that is somehow 'linked' to a computer (whether directly or indirectly)." Id. at 18-20 (noting that such a construction would render the term "local" superfluous or redundant in light of claim 1's requirement that local memory devices be "coupled" to a computer).

Mangosoft pruned its claim assertion. The district court, in summary judgment, pruned it further: to zero, on non-infringement. Mangosoft appealed.

Mangosoft took exception to dictionary definition. The CAFC gave that no exception.

Mangosoft relies heavily on the fact that the district court's opinion preceded Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and principally argues that the result was improperly influenced by references made by the parties to a technical dictionary. Mangosoft's position is misplaced for several reasons and places undue weight on what it contends was the district court's reliance on the Texas Digital methodology. See generally Phillips, 415 F.3d at 1319-22 (discussing Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002)). First, while there is no question that dictionaries were considered, even Phillips recognized that reference to such sources is not prohibited so long as the ultimate construction given to the claims in question is grounded in the intrinsic evidence and not based upon definitions considered in the abstract. Phillips, 415 F.3d at 1318 (noting that "dictionaries, and especially technical dictionaries, endeavor to collect the accepted meanings of terms used in various fields of science and technology" and thus "have been properly recognized as among the many tools that can assist the court in determining the meaning of particular terminology to those of skill in the art of the invention"); see also Acumed LLC v. Stryker Corp., 483 F.3d 800, 809 n.2 (Fed. Cir. 2007) ("Although in Phillips we rejected an approach in which a broad dictionary definition is adopted and then whittled down only if contradicted by the specification, we did not prohibit the use of dictionaries in claim construction, nor did we define at what point in the claim construction analysis they may be consulted." (internal citation omitted)); Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309, 1316 (Fed. Cir. 2006) ("The district court's reference to the dictionary was not an improper attempt to find meaning in the abstract divorced from the context of the intrinsic record but properly was a starting point in its analysis, which was centered around the intrinsic record consistent with Phillips.").

The appeals court thumbed its nose at Mangosoft's approach.

Second, we review judgments, not opinions, and need not focus on the methodology used by the district court. Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1346 (Fed. Cir. 2001) (noting "the familiar principle that this court does not review supporting arguments, but only the decisions reached by the trial court" (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983))); see also Acumed, 483 F.3d at 809 n.2 ("Our de novo review means that we need not decide whether the logic or subsidiary definitions used by the district court to reach the correct construction were sound. . . . We review only the district court's finished product, not its process."). Finally, even though the district court did not have the benefit of Phillips at the time of its decision, the court's claim construction is fully consistent with and supported by the intrinsic record--as well as the dictionary--and thus fully comports with our precedent.

Having found support for the district court's claim construction in the claim language, the specification, and the prosecution history of the '377 patent, we note that this construction is also consistent with the technical dictionary definition proffered by Oracle.

Affirmed.

Under the doctrine of claim preclusion,² "a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action." Parklane Hosiery Co. v. Shore, 439 U.S. 322, 327 n.5 (1979). The Supreme Court has also explained:

The rule [of claim preclusion] provides that when a court of competent jurisdiction has entered a final judgment on the merits of a cause of action, the parties to the suit and their privies are thereafter bound "not only as to every matter which was offered and received to sustain or defeat the claim or demand, but as to any other admissible matter which might have been offered for that purpose."

Comm'r of Internal Revenue v. Sunnen, 333 U.S. 591, 597 (1948) (quoting Cromwell v. County of Sac, 94 U.S. 351, 352 (1876)). Whether a claim is barred by claim preclusion is a question of law that appellate courts review de novo. See, e.g., Faust v. United States, 101 F.3d 675, 677 (Fed. Cir. 1996); E&J Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1287 (9th Cir. 1992).

---

² In the interest of precision, courts often use the term "claim preclusion" in place of the more general term "res judicata." See Migra v. Warren City School Dist. Bd. of Educ., 465 U.S. 75, 77 n.1 (1984); Foster v. Hallco Mfg. Co., Inc., 947 F.2d 469, 478 (Fed. Cir. 1991) (hereinafter "Foster"). Although the term res judicata was once used primarily to denote the concept of claim preclusion, usage of the term res judicata has evolved to include "any preclusion of litigation arising from a judgment, including collateral estoppel." Foster, 947 F.2d at 478. Thus, to maintain the analytical distinction between res judicata and collateral estoppel, courts often substitute the terms "claim preclusion" and "issue preclusion." Id. See generally Restatement (Second) of Judgments, Introductory Note before ch. 3 (1982) (discussing the terminology of res judicata); 18 Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice and Procedure § 4402 (2d ed. 2002) (same).

In addition, because the term "claim" has a special meaning in patent law, we note that we use the term "claim" in our discussion of claim preclusion to denote a cause of action, not a patent claim.

---

Claim preclusion for patent infringement falls under Federal Circuit law, while, more generally, claim preclusion applies under the law of the regional circuit.

Infringement by different products justifies successive actions. A defendant holds the burden to demonstrate "that the accused devices are essentially the same."

It follows from Young Engineers that claim preclusion does not apply unless the accused device in the action before the court is "essentially the same" as the accused device in a prior action between the parties that was resolved by a judgment on the merits. Foster, 947 F.2d at 479-80. Accused devices are "essentially the same" where the differences between them are merely "colorable" or "unrelated to the limitations in the claim of the patent." See id. at 480; cf. KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1526 (Fed. Cir. 1985) (holding that "contempt proceedings . . . are available only with respect to devices previously admitted or adjudged to infringe, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent" (emphasis added)). Finally, the party asserting claim preclusion has the burden of showing that the accused devices are essentially the same. Foster, 947 F.2d at 480.

Oregon district court neglected job one: compare the accused devices.

In this case, the district court held that Acumed's infringement claim against Stryker is precluded by a prior action between the parties that was resolved by a final judgment on the merits, namely the judgment in Acumed I. Acumed II, 2006 WL 3253115 at *18. However, the district court did not compare the accused device in this case with the accused device in Acumed I to determine whether they are "essentially the same" under Foster.

Instead, the district court figured that Acumed had its chance in the first suit. No second chance. Long-standing case law states otherwise.

[T]he Supreme Court explained as early as 1876 that claim preclusion does not bar a claim merely because it could have been raised in a prior action between the parties that was resolved by a final judgment on the merits.

[T]wo claims for patent infringement do not arise from the same transactional facts unless the accused devices in each claim are "essentially the same." Id. at 479-80.

Stryker has conceded in its brief to this court that the accused device in the present action (i.e., the T2 Long) is not essentially the same as the accused device in Acumed I (i.e., the T2 PHN).

Accordingly, Stryker has failed to show that Acumed I bars the present action under the doctrine of claim preclusion.

Reversed and remanded.

35 U.S.C. § 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

During Bilski oral arguments, CAFC judges probing went to "useful" and synonyms thereof. Let's cut the circumlocutions. § 101 requires only "useful." Start with the plain meaning of the term.

Merriam-Webster's 3rd Unabridged Dictionary: "capable of being put to use; having utility."

Merriam-Webster's 11th Collegiate, slightly rephrasing the Unabridged: "serviceable for an end or purpose."

What useful is not is abstract. Last year's CAFC ruling In re Comisky reiterated:

"Abstract ideas" are one type of subject matter that the Supreme Court has consistently held fall beyond the broad reaches of patentable subject matter under § 101. As early as Le Roy v. Tatham, 55 U.S. 156 (1852), the Supreme Court explained that "[a] principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right." Id. at 175. Since then, the unpatentable nature of abstract ideas has repeatedly been confirmed.

What useful does not require is technology. The BPAI pitched the "technological arts" test in the Lundgren case.

[T]he Supreme Court was aware of a "technological arts test," and did not adopt it when it reversed the Court of Customs and Patent Appeals in Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972).

In re Comisky rejected mental process alone as an abstraction, as well it should.

[A]pplication of human intelligence to the solution of practical problems is not in and of itself patentable.

The CAFC added in Comisky that programming a mental process into a computer walks right into the jaws of Obzilla.

The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness.

In other words, computer automation does not engender patentability.

"Moreover, merely using a computer to automate a known process does not by itself impart nonobviousness to the invention. See Dann v. Johnston, 425 U.S. 219, 227-30, 189 USPQ 257, 261 (1976); In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958)." [Source: MPEP 8r4 2106]

Comisky's twin, In re Nuijten gave another pointer: ephemeral existence is insufficient.

The claims on appeal cover transitory electrical and electromagnetic signals propagating through some medium, such as wires, air, or a vacuum. Those types of signals are not encompassed by any of the four enumerated statutory categories: 'process, machine, manufacture, or composition of matter.

The Nuijten majority was wrong - the issue is outcome, not permanence. Zen Judge Linn rightly dissented. What, after all, endures?

[W]e have squarely held that transitory inventions are patentable under § 101.

The distinctions that are drawn between signals and storage media containing those signals would appear to apply equally to the distinctions between software and hardware and are artificial at best.

Nuitjen filed a petition for writ of certiorari with the Supreme Court last Friday.

At least for now, then, utility must be sustained for something more than a flash in the pan, even though the 1853 Supreme Court decision of O'Reilly v. Morse found the process of producing Morse code patentable under § 101.

One wouldn't think such a struggle in defining a word, 'useful,' coined in 1595. And so the courts should not, though they do, likely with ulterior political motive, and fear of letting some unseen horse out of the barn.

A process is statutory if it is "capable of being put to use." No technology required beyond practical utility. "Anything under the sun that is made by man." - Diamond V. Chakrabarty, 447 U.S. 303 (1980), quoting the Congressional committee report on the 1952 Patent Act.

The above reasoning does not put Bilski out of the woods. Bilski claims:

1. A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of: (a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer; (b) identifying market participants for said commodity having a counter-risk position to said consumers; and (c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.

The vagary of the claim wafts of a § 112 ¶2 violation, as well as a stench of abstraction, in claiming balancing a "risk position." What after all, would the outcome be of achieving such a balance? The claim begs for something more, ahem, useful.

In the nineteen-sixties, the sociologist Robert K. Merton wrote a famous essay on scientific discovery in which he raised the question of what the existence of multiples tells us about genius. No one is a partner to more multiples, he pointed out, than a genius, and he came to the conclusion that our romantic notion of the genius must be wrong. A scientific genius is not a person who does what no one else can do; he or she is someone who does what it takes many others to do. The genius is not a unique source of insight; he is merely an efficient source of insight.

Merton's observation about scientific geniuses is clearly not true of artistic geniuses, however. You can't pool the talents of a dozen Salieris and get Mozart's Requiem. You can't put together a committee of really talented art students and get Matisse's "La Danse." A work of artistic genius is singular, and all the arguments over calculus, the accusations back and forth between the Bell and the Gray camps, and our persistent inability to come to terms with the existence of multiples are the result of our misplaced desire to impose the paradigm of artistic invention on a world where it doesn't belong. Shakespeare owned Hamlet because he created him, as none other before or since could. Alexander Graham Bell owned the telephone only because his patent application landed on the examiner's desk a few hours before Gray's. The first kind of creation was sui generis; the second could be re-created in a warehouse outside Seattle.

This is a confusing distinction, because we use the same words to describe both kinds of inventors, and the brilliant scientist is every bit as dazzling in person as the brilliant playwright.

There are trends in both the technical and non-technical arts.

Technology comes to cusps, where one or more inventors cross chasm to the shores of solution. That more than one similarly talented and disciplined inventor beach nearby is merely logical.

Artists often exist in a community, at least by virtue of appreciation. Styles of expression are often both individual and derivative, as with invention. Nothing odd that more than one artistic craftsman may mine the same quarry coincidentally.

But similar contemporaneous efforts in no way detract from the fact that artistic accomplishment, technical or otherwise, is the pinnacle of human endeavor, both rare and precious in view of collective incompetence. These progressions deserve celebration as peak outputs by their creators, and rewarding experiences by their audience.

Individuals who consistently create high art are quite rare, in view of the collective (i.e., the masses).

Discovery is all the more stunning because it was always within the field of view, its happening earlier lacking only someone's perception and conceptualization, qualities we presume in humanity that are more proven by their absence than existence.

Aristotle: "We are what we repeatedly do. Excellence, therefore, is not an act, but a habit."

By contrast, Nortel's patent portfolio is full of junk. Patent Hawk has repeatedly invalidated Nortel patents.

IP is a limited exclusive right to an inventor's time, not a limited exclusive right to a thing. I.e., IP is Not an Asset. Lawyers, business people, and politicians should consider how the patent law will affect the activities of inventors. A plugged R&D pipeline can lead to Stranded R&D and an exodus of inventors from the United States. We would promote the progress of arts and sciences better by building legal and financial institutions that recognized the benefit of a division of labor between inventing ideas and building things. This is What Adam Smith taught the Founding Fathers.

Meuer-Bessen is being taken quite seriously within mainstream industry and has already received the endorsement of prominent members of the academy.

Professor Dennis Crouch says that "[t]he analysis done in [Patent Failure] put[s] Bessen and Meurer at the forefront of leaders in economic analysis of patent laws." Patently O (March 13, 2008).

If judged by the current Congressional stalemate, an apparently complete lack of understanding exists within bio/pharma/chemistry as to the needs of essentially all other mainstream industries where litigation costs far outweigh patent profits as explained by Professors James Bessen and Michael J. Meuer.

Patent Failure provides an economic analysis based upon data supplied by some of the leading patent academics of the United States, including data shared by Circuit Judge Kimberly Moore. The back cover of the book contains the enthusiastic endorsement of Professor Mark Lemley of Stanford University.

Since Patent Failure represents the view of mainstream industry outside biotech, pharmaceuticals and chemistry, the perception manifested by Bessen-Meuer becomes the reality for the foundation for patent reform debates in the coming Congress.

The only Congressman with outspoken understanding of the situation is Republican Rep. Dana Rohrabacher.

The patent system is not for corporations. It is for inventors. The BM premise is fundamentally flawed.

The cost of litigation by infringing corporations does not justify decimating patent protection. Yet that is the lynchpin argument BM make.

Patent infringers voluntarily incur litigation cost to roll the dice on getting away with infringement, rather than take licenses. That fact is well known to anyone familiar with the patent litigation scene, and has been repeatedly chronicled in the Patent Prospector.

BM's figures are garbage, and their underlying presumptions wrong. For more content, read previous coverage in The Patent Prospector: March 24, 2008; March 13, 2008; March 20, 2008

BM do make a valid point, as Patent Hawk pointed out earlier today, about better demarcating patent claims:

The Federal Circuit needs to get serious about invalidating claims that are indefinite.

In my most recent reply to non-final office action on one of my own patents, in preface to traversal under §103(a):

In the interest of compact prosecution, applicant replies to the most glaring oversights, preserving elaborated argumentation for the inevitable appeal.

The closing passage:

Examiner failed his basic examination obligations under 35 U.S.C. §131 and MPEP 706.02(j).

USPTO examination has become a bad joke, bringing disgrace to the examiner corps. In the past few years, applicant repeatedly receives careless rejections such as this. Still, thanks for not piling it on.

With rare exception, every application must now go to appeal. See you there next round.

This wisdom has direct relevance to the secondary markets for IP. Most of the firms now in the secondary markets for IP have taken the view -- and are conducting their businesses -- as if IP were an asset. This is because IP does bear some characteristics of an asset. Namely, like real and personal property, IP can be protected through exclusive rights. The analogy to property has thus come to dominate our understanding of the nature of IP.

Although accountants often treat IP as an asset, IP is not a commodity. IP is more like equity, although it is not like other equity. IP is a limited exclusive right to human capital (namely, to inventors' time solving a technological problem).

Maybe part of the reason that Abraham Lincoln understood the importance of patent law is because he understood that human capital cannot be owned. The photograph shows the Emancipation Proclamation, whereby Lincoln did more for the cause of freeing human capital than many other men together have done in the course of human history. Lincoln loved the patent system because he understood that it too could lead to more freedom. Scientists and engineers work best free from the immediate demands of business people and customers. The idea of a patent system carries within itself the promise of more innovation and more freedom.

POSTSCRIPT: Please note that I do not believe that inventors are literally enslaved right now. There are obviously huge differences between the enslavement of millions of black Americans and the metaphorical enslavement of inventors who are now forced to do other kinds of work because of the broken patent system. I do, however, believe that making people more free leads always to a multiplicity of unanticipated social benefits.

The USPTO is broken. Absolutely. Dissolute, incompetent management has made a mockery of "examination on the merits." This is but a slice of a wider panorama, the Bush legacy of the destruction of America, but, as with other slices, quite significant economically.

The courts are dupes of anti-patent propaganda. Sad, and pathetic, really. The CAFC is on a drunken lurch, while the Supreme Court blithely spits on patent protection when it chooses, ignorant of technology and economics. KSR was an obscenity against common sense, ironically in the name of common sense.

There is no statutory basis for "one skilled in the art" being divergently defined. It is an artifice of the courts. It's not the KSR omnificent as everyman, with creative leaps of insight, no documentation necessary. And it's not the lack-of-enablement nitwit. If you invent a new corn seed, you shouldn't need to enable dirt. "One of ordinary skill in the art" knows her craft, but her insights for combination are limited to what's been tried before, in whatever field of endeavor. Everything is not "obvious to try." If the prior art was not analogous, it was not obvious at the time of invention.

Inability to delineate the boundaries of claims continually brings shame to the appeals court. 2005's Phillips v. AWH was decent, but as much a missed opportunity as anything. And there have been many missed opportunities since. Claim construction confusion reigns, litigation as much a crap shoot as ever. "And" means "or." Dissenting opinions on claim constructions are the norm. The CAFC can't even count, refusing to distinguish between singular and plural.

The rules of claim construction can, and should be, a lot easier. Construe the claims as written. If the claims drafter made a mistake, too bad. A prosecutor holds the responsibility to draft claims "distinctly claiming the subject matter," staking terms with either definitional support from intrinsic evidence, or plain meaning in context of the claims. The benefit of the doubt extends only to plain meaning: not to twist into a narrowing knot plain language already wrote, as the courts too often do.

To hell with squirrelly claims. Put the fear of clear English behind §112 ¶2.

'131 missed by summary judgment of non-infringement. '131's dispute revolved around the construction of a claimed "terminal device."

The district court came up with a narrow construction.

After reviewing the specification and the prosecution history, the court then refined its definition of "terminal device" to "exclude[] arrangements where the host processor controls the positioning of objects on the display of the terminal device." Id. The court found that, in the accused devices, the host processors (web servers) participate in determining the location of objects on the display of the terminal device (computer).

Lucent avers... that the district court erred in further defining "terminal device" to be a computing device that "manages its associated display itself" and to "exclude[] arrangements where the host processor controls the positioning of objects on the display of the terminal device."

The CAFC noted that the claims lacked definition of a terminal. Bad claims drafting is the root of all claim construction evil. The CAFC found no support for the district court construction in the abstract or summary. The detailed description disclosed a germane smartphone embodiment.

We agree with Lucent that the Detailed Description indicates a role for the host processor in the control of how and where objects are displayed on the terminal device.

Accordingly, the definition ascribed by the district court to the term "terminal device" is in conflict with the teachings of the Detailed Description.

Finally, in further support of the district court's claim construction, the defendants argue that the prosecution history contains a clear disavowal of control by the host processor over the location of objects on the terminal display.

"[A] clear and unmistakable disavowal of scope during prosecution" may affect the construction of a claim term. Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006); Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1343 (Fed Cir. 2001). We agree with Lucent that the cited prosecution history does not contain a clear disavowal of any control by the host processor over object location.

'131 vacated and remanded in light of the new construction of "terminal device."

Judge Lourie dissented on '131, willing to have affirmed the district court construction.

It is disingenuous for the inventors to say now that allowing the host processor to specify some limited relative positioning was an important aspect of their invention that they did not intend to surrender when they made absolutely no effort to provide such clarity in the prosecution of their patent.

The fate of '954 hung on the phrase "each successive iteration including the steps of."

The district court construed the phrase "each successive iteration including the steps of" to require that "all of the steps following this clause [steps 1-5] must each be performed in forming each pulse." Lucent Techs., Inc. v. Gateway, Inc., Nos. 02-CV-2060, 03-CV-0699, 03-CV-1108, slip op. at 7 (S.D. Cal. Apr. 15, 2004). Lucent argues that the court erred in its construction. According to Lucent, only step 5 needs to be performed in forming each pulse, whereas steps 1-4 may be performed only once per frame.

Again, a cut of foul claim drafting wafts. Lucent tried to wave the stink away. But the malignance lingered.

We begin with the claim language itself. Lucent argues that the term "including" need not be interpreted to mean "comprising" because dictionary definitions suggest that it may also mean "considering" or "involving as a factor." Therefore, according to Lucent, a reasonable interpretation of the claim does not require that all of steps 1-5 be performed in each pulse-producing iteration. Rather, it contends that the phrase "including the steps of" may be read to mean that performance of steps 1-4 can occur outside the pulse loop provided that the results of those steps are used in the calculation of pulses in step 5.

The defendants, on the other hand, argue that the ordinary and plain meaning of the claim supports the district court's claim construction.

We agree with the defendants that the claim language clearly supports the district court's claim construction requiring performance of all of steps 1-5 during each pulse-forming iteration.

This court has consistently interpreted "including" and "comprising" to have the same meaning, namely, that the listed elements (i.e., method steps) are essential but other elements may be added. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1344-45 (Fed. Cir. 2003); see also Cias, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1361 (Fed. Cir. 2007). Because the claims of the patent "provide substantial guidance as to the meaning of . . . claim terms," Phillips, 415 F.3d at 1314, we find that, here, the language of the claims strongly supports the district court's claim construction.

This court has repeatedly held that courts may not redraft claims to cure a drafting error made by the patentee, whether to make them operable or to sustain their validity. Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373 (Fed. Cir. 2004); Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002); Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999); Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995); Hoganas v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993). To do so "would unduly interfere with the function of claims in putting competitors on notice of the scope of the claimed invention." Hoganas, 9 F.3d at 951. While it is true that we may construe claims to sustain their validity when the claims are amenable to more than one reasonable construction; when the claims are susceptible to only one reasonable construction, we will construe the claims as the patentee drafted them. Process Control, 190 F.3d at 1356-57; see also Elekta Instrument S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d 1302, 1309 (Fed. Cir. 2000) ("[H]aving concluded that the amended claim is susceptible of only one reasonable construction, we cannot construe the claim differently from its plain meaning in order to preserve its validity . . . ."). Indeed, we have limited application of the maxim that claims should be construed to preserve their validity to situations in which we conclude, after reviewing all the intrinsic evidence, that the claim language is ambiguous. Phillips, 415 F.3d at 1327. However, where we conclude that the claim language is unambiguous, we have construed the claims to exclude all disclosed embodiments. Chef Am., 358 F.3d at 1373-74; Elekta Instrument, 214 F.3d at 1308-09.

The construction by the district court is also supported by the prosecution history.

There was even a little Festo in the festivities.

We agree with the defendants that the district court did not err in holding that infringement under the doctrine of equivalents is barred by prosecution history estoppel. The applicant amended the claims in response to a rejection during prosecution to require performance of steps 1-5 during each pulse-forming iteration. Narrowing the claims in response to a rejection during prosecution creates a presumption that the applicant surrendered the territory between the original claims and the amended claims. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740 (2002).

In determining whether the patentee can rebut the Festo presumption of surrender under the tangential exception, the focus is on the "patentee's objectively apparent reason for the narrowing amendment," and the inquiry is "whether the reason for the narrowing amendment is peripheral, or not directly relevant, to the alleged equivalent." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1369 (Fed. Cir. 2003) (en banc)... Accordingly, we hold that the district court did not err in holding that Lucent was barred by prosecution history estoppel from asserting infringement under the doctrine of equivalents.

'954 was a goner.

Hat tip of thanks to the Patently-O Professor.