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Claim terms with a broad plain meaning are not limited by the disclosed embodiments absent lexicography or disavowal

July 7, 2014

Claim terms with a broad plain meaning are not limited by the disclosed embodiments absent lexicography or disavowal

July 7, 2014

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Federal Circuit reverses claim construction and non-infringement judgment.  The parties disputed the construction of four terms in claims to a hospital bed system in which sensors on the bed send information to a remote location where hospital personnel can monitor it.

Hill-Rom Services, Inc. v. Stryker Corp., ___ F.3d ___ (Fed. Cir. June 27, 2014) (MOORE, Schall, Reyna (dissenting)) (S.D. Ind.: Magnus-Stinson) (3 of 5 stars) 

The Federal Circuit construed the claimed “datalink” for sending the information to have its “plain and ordinary meaning, which is a link that carries data and encompasses both wired and wireless connections.”  Slip op. at 4.  “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances:  lexicography and disavowal.”  Id.  Nothing in the specification met these “exacting” standards.  Id. at 5-6.  “There are no words of manifest exclusion or restriction.  The patents-in-suit do not describe the invention as limited to a wired datalink.  There is no disclosure that, for example, the present invention ‘is,’ ‘includes,’ or ‘refers to’ a wired datalink and there is nothing expressing the advantages, importance, or essentiality of using a wired as opposed to wireless datalink.”  Id. at 6.  It did not matter that the embodiments all showed a wired datalink or that the examiner observed the patent does “not teach” a wireless receiver because “[t]he absence of an embodiment teaching a wireless receiver does not prevent the claimed datalink from being given its plain and ordinary meaning at the relevant time.”  Id. at 8.  That terms must be given their plain meaning in the context of the specification is not “a license to read limitations from the embodiments in the specification into the claims.”  Id. at 9.  The patentee’s construction was further supported by (i) uncontroverted expert testimony on the plain meaning, (ii) the fact wireless connections existed at the filing data, and (iii) dependent claims adding a “wired” limitation.  The potential for enablement problems under a broad construction also did not justify a narrower construction.  “Courts should be cautious not to allow claim construction to morph into a mini-trial on validity.  Claim terms … cannot be rewritten by courts to save their validity.”  Id. at 10.  Finally, it was appropriate to construe “datalink” in functional terms where that is consistent with its plain meaning.

The Federal Circuit applied similar principles to the other disputed terms.  A claimed “interface board including a processor” was not limited to something that sends messages or is connected to a wall unit because its plain meaning was broader, dependent claims reinforced the term’s breadth, and the term was not limited by the disclosed embodiments.  Likewise, the claimed “message validation information,” had its broad plain meaning and was not limited to a single data field or a 100% accuracy.  References to a single field in the specification did not limit the term because there “is no suggestion that utilizing only a single field is important, essential, critical or valuable to the present invention.  There are no words of manifest exclusion.”  Id. at 17.  And requiring 100% accuracy would exclude the preferred embodiment.  Finally, the claimed “bed condition message” did not exclude messages generated by user request or those containing a subset of the data.  The patentee’s statements while prosecuting a later application did not justify limiting the term because:  (i) under Pfizer, Inc. v. Ranbaxy Labs., Inc., 457 F.3d 1284 (Fed. Cir. 2006), “statements made during prosecution of a later, unrelated patent cannot form the basis for judicial estoppel,” id. at 22; and (ii) they were not actually inconsistent with the term’s broader plain meaning.

Dissent:  Judge Reyna would have limited “datalink” to a physical connection because the intrinsic record did not describe a wireless datalink, the patentee only added the broader claims 14 years after its initial filing date, and the patentee’s expert testimony on ordinary meaning was ambiguous and conclusory.  In addition, limiting the term to physical connections was not inconsistent with the dependent claims reciting a “wired datalink” because this is only one type of physical connection.

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.

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Joanna M. Fuller | Principal

Ms. Fuller is a Principal in the Southern California office of Fish & Richardson. Ms. Fuller represents pharmaceutical and high tech clients in patent litigation nationwide. Her cases have encompassed a wide range of technology, including pharmaceuticals, video coding, backup and...

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