Chapter §15.05 Disclaimer or Disavowal

• Jurisdiction: United States

§15.05 Disclaimer or Disavowal

The ordinary and customary meaning of a claim term may be narrowed in the scenario where statements made by the patent applicant, either in the specification when filed or thereafter during prosecution in the USPTO, amount to a disclaimer or disavowal of claim scope. The Federal Circuit requires that if they are to be effective in limiting claim scope, such disclaimers or disavowals must be clear. The clarity requirement ensures that the disavowal of claim scope was intentional on the part of the patent applicant.

[A] In the Specification

The en banc court in Phillips v. AWH announced that in addition to the exception in which the inventor's own lexicography/special definition trumps the ordinary or customary meaning of a claim term, there are other cases in which

the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor's intention, as expressed in the specification, is regarded as dispositive. ²⁸⁵

The Federal Circuit in Thorner v. Sony Computer Ent. Am. LLC²⁸⁶ emphasized that the standard for disavowal of claim scope is an "exacting" one,²⁸⁷ stating that

[w]here the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question." SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.Cir.2001). "The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed.Cir.2002); see also Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed.Cir.2004) ("Absent a clear disavowal in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.").

The Federal Circuit reversed a district court in Thorner for erroneously concluding that the patentee in its specification had disavowed part of the plain and ordinary meaning of the word "attached." As discussed supra,²⁸⁸ the patented invention in Thorner involved a "tactile feedback system" for use with computer and video games. For example, the system might include a seat, a vest, and/or a hand-held game controller that vibrated during a simulated crash in a car racing video game. The specification variously referred to the vibration-generating actuators as either "attached to" or "embedded within" the system components. More precisely, the specification always used the term "attached" to refer to embodiments in which the actuator was attached to an outer surface of an object (such as the outer surface of a throttle handle) and always used the term "embedded" to refer to embodiments in which the actuator was located inside an object (such as a foam seat).

In the Federal Circuit's view, these distinct uses of "attached" and "embedded" as alternatives were not enough to represent a clear and explicit disavowal of the full scope of "attached." The Federal Circuit observed that "the plain and ordinary meaning of embedded, 'attached within,' is narrower than 'attached.' " It "made sense" to the Federal Circuit that the patentee would use "embedded" when it meant "attached to the inside only." This usage did not work a disavowal of the full scope of "attached" so as to narrow it to mean "attached to the outside only." To affirm the district court's interpretation favoring accused infringer Sony (that "attached" was limited to attachments to outside surfaces) would have required reading a limitation into the claim from the specification. The Federal Circuit "do[es] not read limitations from the specification into the claims . . . [o]nly the patentee can do that."²⁸⁹ In the case at bar, the plain and ordinary meaning of attached did not require the term to be limited to attachments to outer surfaces only—it encompassed either internal or external attachments.

In contrast to Thorner, the Federal Circuit held in SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,²⁹⁰ that statements in the specification of the patents in suit did work an explicit, "clear case" of claim scope disclaimer. In fact, the court in SciMed found it "difficult to imagine how the patents [in suit] could have been clearer" in this regard.²⁹¹

The patented technology in SciMed involved balloon dilation catheters used in angioplasty procedures to remove restrictions in a patient's coronary arteries. SciMed's three patents in suit shared a common written description. The catheters claimed in the patents contained two passageways, or lumens.²⁹² The first, a guide-wire lumen, guided the catheter through the patient's arteries to the coronary restriction. The second, an inflation lumen, terminated in a balloon that was inflated so as to compress and relieve the restriction.

The claim interpretation dispute in SciMed centered on the structural arrangement of the two lumens. The parties agreed that the prior art practiced only two arrangements: (1) a "dual" (or adjacent) configuration in which the two lumens were positioned side-by-side within the catheter; and (2) a "coaxial" configuration in which the guide wire lumen ran inside the inflation lumen such that a cross section of the inflation lumen would show it as annular in shape. The accused ACS catheters used only the dual lumen configuration. The patentee asserted that the coaxial configuration shown and described in its patent was only its preferred embodiment, and that its claims should be interpreted broadly enough to cover both types of configurations. A district court disagreed with the patentee, interpreting the claims based on language in the patents' specifications as limited to catheters with coaxial lumens. The district court accordingly granted the accused infringer ACS summary judgment of noninfringement.

The Federal Circuit in SciMed affirmed. The appellate court instructed that in its written description, a patentee can narrow what would otherwise be the full scope of its claims as viewed in the abstract without the remainder of the written description. Such narrowing can occur not only by explicitly redefining claim language but also by other types of statements in the written description amounting to a clear disclaimer. That is, "[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."²⁹³ In the case at bar, "the written description makes clear that when the asserted claims refer to the respective locations of the guide wire and inflation lumens, and in particular when the claims refer to the inflation lumen as 'extending through the catheter separate from' the guide wire lumen, the claim language refers to coaxial lumens."²⁹⁴

The Federal Circuit referenced several portions of the patents' written description that led the appellate court to the "inescapable conclusion" that the patentee's claims read only on catheters having coaxial lumens.²⁹⁵ For example, the written description distinguished the prior art on the basis of the use of dual lumens and pointed out the advantages of the patentee's coaxial lumens.²⁹⁶ Moreover, the patents in several instances described "the present invention" as having an "annular inflation lumen." This characterization of the "present invention" was "strong evidence that the claims should not be read to encompass the opposite [dual or side-by-side] structure."²⁹⁷

Most persuasive and compelling in SciMed, however, was the written description's characterization of an "intermediate sleeve section" in which the inflation lumen was annular in structure, being formed with the inflation lumen as the outer sleeve or tube and the guide-wire lumen as the inner core tube. The patents stated that this intermediate sleeve structure "is the basic sleeve structure for all embodiments of the present invention contemplated and disclosed herein. . . ."²⁹⁸ The Federal Circuit concluded that

[t]he words "all embodiments of the present invention" are broad and unequivocal. It is difficult to imagine how the patents could have been clearer in making the point that the coaxial lumen configuration was a necessary element of every variant of the claimed invention. Moreover, there is no suggestion that the patentee made that statement unaware of the alternative dual lumen configuration, because earlier in the patent the patentee had distinguished the dual lumen configuration used in prior art devices as having disadvantages that the coaxial lumens used in the patented invention had overcome. See '594 patent, col. 3, ll. 1–22; '482 patent, col. 3, ll. 3–24; '334 patent, col. 3, ll. 8–29. (describing the dual lumen configuration). This is therefore a clear case of disclaimer of subject matter that, absent the disclaimer, could have been considered to fall within the scope of the claim language.

Hence, the Federal Circuit affirmed the district court's grant of summary judgment of no literal infringement. The district court "was correct to construe the patents as disclaiming the dual lumen configuration."²⁹⁹

Contrasting decisions such as Thorner and SciMed indicated that the Federal Circuit's standard for finding a disclaimer of claim scope based on statements in a patent's specification would be a difficult test to satisfy. One judge of the Federal Circuit went so far as to describe such claim scope disclaimer as "rare." In Digital-Vending Services Int'l, LLC v. Univ. of Phoenix, Inc.,³⁰⁰ Judge Moore, dissenting in part, stated that:

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