Defendants often want to import limitations from the specification to the claims. It only takes one missing claim element per claim to defeat an allegation of patent infringement (setting aside DOE). And the language of patent specifications is often narrower than the claims themselves, providing ample opportunities to find limitations.
Federal Circuit precedent, of course, says that the Court should avoid importing limitations from the specification into the claims—but using the specification to interpret the meaning of a claim is OK. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). As countless courts have recognized, that is a fine line.
As a result, defendants' early-case strategy often involves using the specification to interpret the claims in a way that just happens to exclude the accused products, with the goal of winning on summary judgment or simply achieving a better settlement position.
That's why it's interesting when a defendant succeeds at claim construction in limiting the claims based on the specification. There are a few ways that defendants usually do this. For example, they may make the "patentee as a lexicographer" argument, argue based on language in the spec that describes "the invention" as a whole, or sometimes try to rely on an argument that "every embodiment" in the spec has a particular limitation.
Today Judge Burke issued a claim construction R&R where a variation on that last theme—the "every embodiment" argument—worked. In construing the phrase "panoramic objective lens" and related terms, the Court limited the term to a "lens having an angular aperture on the order of 180°, such as a fish-eye lens.” The Court based this first on consistent examples from the spec:
Why is this construction appropriate (and Plaintiff’s competing construction inappropriate)? The Court sets out three primary reasons below.
First, in addition to the above block-quoted portion of the specification, every other reference in the patent to a panoramic objective lens describes such a lens as one with about a 180° field of view. [listing six examples]
He also noted that the "wide-angle" limitation from plaintiffs' construction ("wide-angle objective lens") never appears in the spec, but the 180° field of view limitation from the Court's construction does:
[I]t is important to note, as Defendants do, that the patent “never describes a panoramic lens as a mere ‘wide angle lens.’” . . . And while “wide angle lens” appears nowhere in the patent, the Court’s recommended construction comes directly from many, many different places in the patent (as noted above)—basically, from every part of the patent in which the field of view of a “panoramic objective lens” is more fully described.
Judge Burke pointed out that, given two proposed terms, it makes sense to select the proposal with the greater tie to the specification:
If the Court is to choose between a construction that has no tether to the patent-in-suit on the one hand, and one that is deeply founded in the patent’s wording on the other, the latter construction surely seems the stronger one. After all, the Court’s focus here is on understanding how the patent describes a panoramic objective lens—not on how the patent does not describe the term.
This looks to be a useful quote to keep in your back pocket for the next time this situation comes up. While the Court did not spell it out as such, given a choice between a broad construction untethered to the specification, and a much more limiting construction that matched language in the spec, the Court chose the one with more support in the specification.
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