Article by Clyde Shuman
The U.S. Court of Appeals for the Federal Circuit has clarified the standard for incorporating a limitation from the specification into the claims. In Continental Circuits LLC v. Intel Corp. et al., case number 18-1076, the Court remanded a district court’s (stipulated) judgment of non-infringement, based on an erroneous claim construction, remanding for further proceedings.
Continental had asserted four patents, all directed to a “multilayer electrical device . . . having a tooth structure” and methods for making the same, against Intel and others, in the district court. All of the asserted claims included limitations regarding the “surface,” “removal,” or “etching” of “a dielectric material” or “epoxy,” which the district court construed together as the “Category 1 Terms.” At issue was whether the construction of these terms should be limited to a repeated desmear process.
The district court construed the Category 1 Terms to require that the “surface,” “removal,” or “etching” of the dielectric material be “produced by a repeated desmear process,” finding that Intel had “met the exacting standard required” to read a limitation into the claims. Per the lower court, the specification not only “repeatedly distinguishe[d] the process covered by the patent from the prior art and its use of a ‘single desmear process,’” but also characterized “the present invention” as using a repeated desmear process.
Based on the court’s claim construction, the parties stipulated to noninfringement and the court entered judgment accordingly.
On appeal, Continental argued that the district court erred in construing the Terms to require that the dielectric material be “produced by a repeated desmear process,” saying that the plain language of the claims does not include this process and the specification does not clearly and unmistakably limit the claims to require this process.
The Federal Circuit agreed, noting that claim construction requires that district courts give claims their ordinary and customary meaning, which 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.” Although the claims do not stand alone and must be read in view of the specification and prosecution history, the Court noted that none of the asserted claims actually recite a “repeated desmear process.”
As for the specification, the Court reiterated that, for a patentee to act as his own lexicographer, he must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning. Alternately, the specification may include an intentional disclaimer, or disavowal, of claim scope.
The Court “acknowledge[d] the difficulty in drawing the 'fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims'," saying that, “[t] o avoid improperly importing limitations into the claims, 'it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention.’”
With these principles in mind, the Court held that none of the statements relied upon by the district court rose to the level of “a clear and unmistakable disclaimer.” By way of example, the Court said that distinguishing the double desmear process as “contrary to” or “in stark contrast” with the single desmear process, were not clear and unmistakable limiting statements. Likewise, the Court found use of the term “the present invention” not limiting, noting that the use of that term in the specification does not uniformly require use of a repeated desmear process, noting that “desmear” does not appear in the summary of the invention section.
The Court said: “In light of this, it is difficult to say that the present invention ‘as a whole’ necessarily includes the repeated desmear process. Thus, absent ‘clear and unmistakable’ language suggesting otherwise, we conclude that the aforementioned statements do not meet the ‘exacting’ standard required to limit the scope of the claims to a repeated desmear process.”
The Court concluded, saying that the Category 1 Terms should not be limited to requiring a repeated desmear process and should be given their plain and ordinary meaning.