The Federal Circuit and Claim Construction: Resolving the Conflict Between the Claims and the Written Description

• Publication year: 2002
• Citation: Vol. 4 No. 2002

Gregory J. Gallagher⁰

I. Introduction

Conflicting standards of claim construction confuse patent practitioners and the patent holders they represent about the scope of the patent's protection. In particular, claim construction canons establishing the relationship between the claims and the written description in determining the scope of protection are unclear.¹ In a recent case, Teleflex, Inc. v. Ficosa North America Corp. ,² the Federal Circuit articulated a comprehensive standard that resolves this conflict and provides the appropriate amount of protection to a patentee while providing adequate incentive for innovation. This Recent Development first explores how the standard developed by the court in Teleflex provides a logical framework for claim construction. Second, it describes why the Teleflex approach provides certainty to claim construction and why it will lead to even greater certainty in claim construction over time. Finally, this Recent Development addresses potential criticisms of the Teleflex standard.

II. Claim Construction and its Conflicting Canons

The role of claim construction in a suit for patent infringement is of paramount importance. A determination of patent infringement is a distinct two-step process. First, the court construes the scope of the claims; then, the court compares the properly construed claims to the allegedly infringing device to determine infringement.³ Often, after claim construction, a party will be subject to summary judgment because the comparison of an actual device to the construed claim is relatively straightforward.⁴ As a result, the claim construction process in a suit for patent infringement usually determines the outcome of the suit.⁵

Unfortunately, the claim construction process has been far from clear, and, as a result, the amount of litigation regarding claim construction is voluminous.⁶ At the center of the difficulty in construing claims is the Federal Circuit's use of two apparently conflicting canons of construction with regard to the relationship between the claims and the written description in determining a patent's scope.⁷ One canon of claim construction declares that "one may not read a limitation into a claim from the written description."⁸ A competing canon insists that "one may look to the written description to define a term already in a claim limitation, for a claim must be read in view of the specification of which it is a part."⁹ The Federal Circuit has struggled to reconcile these seemingly conflicting canons and articulate how to read a claim in view of the specification without reading limitations into the claim.

At one end of the spectrum are Federal Circuit decisions holding that claims are construed according to their ordinary and accustomed meaning, unless the claim itself invites reference to the written description expressly, or unless the claim itself is unclear.¹⁰ At the other end of the spectrum are Federal Circuit decisions holding that anytime the written description of the invention disclaims subject matter of the invention the claims should be limited.¹¹ Recent Federal Circuit decisions resolved these differing approaches to claim construction by adopting an approach that advocates always looking to the written description when determining the meaning of claim terms.¹² Furthermore, in Teleflex, Inc. v. Ficosa North America Corp., the Federal Circuit articulated a comprehensive standard that provides the courts with sufficient guidance to determine when it is appropriate to use the written description of an invention to limit the meaning of a claim term.

This Recent Development will evaluate the Federal Circuit's decision in Teleflex along with other significant recent decisions to show how the Federal Circuit developed a trend for claim construction that culminated in a clear articulation of when expressions in the written description limit the meaning of claim terms.

III. Recent Decisions

A. Johnson Worldwide Associates v. Zebco Corp.¹³

The first important case in the recent trend toward a comprehensive standard for claim interpretation based on the written description is Johnson. The Federal Circuit began its claim interpretation analysis in Johnson by asserting that there is a heavy presumption in favor of the ordinary meaning of claim language, unless the claim language itself points to the written description.¹⁴ Under this framework, the court asserted that there are only two situations according to precedent "where a sufficient reason exists to require the entry of a definition of a claim term other than its ordinary and accustomed meaning."¹⁵ They are (1) where the patentee chose to be his or her own lexicographer¹⁶ and (2) where the terms used by the patentee "so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used."¹⁷ Thus, the court espoused a claim construction framework that purported to put strong emphasis on the claims' language to determine their meaning and provided only a very limited role for the written description. Not surprisingly then, the court interpreted the patentee's claims for his "Trolling Motor with Heading Lock" according to their ordinary meaning, thereby giving the patent a broad scope of protection.

B. SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems., Inc.¹⁸

To the contrary, in SciMed, the Federal Circuit began a line of cases that expanded the use of the written description in determining the meaning of claim terms. In SciMed, the court held that "[w]here the specification makes clear that the invention does not include a particular feature," the court will construe the claims narrowly not to include that feature, even though the claim's ordinary meaning is clear and may be construed more broadly.¹⁹ Thus, the court embraced a claim construction framework where "the 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."²⁰

After concluding that courts could limit an otherwise clear claim term, the SciMed court used five recent cases to show how courts have limited a patentee's claims based on representations made in the written description.²¹ According to those cases, a court will limit a claim's meaning: (1) when the specification describes only one feature and states that "the present invention" utilizes that feature;²² (2) "[w]hen the 'preferred embodiment' is described as the invention itself ...";²³ (3) when patentees expressly disclaimed subject matter in the written description;²⁴ (4) when patentees expressly disclaimed subject matter to avoid the prior art;²⁵ and (5) when the specification and drawings show a feature, do not illustrate or describe any other structure, and describe the advantages of the feature as important to the invention.²⁶

The SciMed court then held that the claim language at issue must be narrowed in accordance with the prior cases because the specification expressly disclaimed subject matter to avoid prior art and pointed to the advantages of doing so.²⁷ In a concurring opinion, Judge Dyk agreed that the court should look to the written description for guidance as to the meaning of the claim.²⁸ However, Judge Dyk asserted that the SciMed court did not provide adequate guidance as to when it is appropriate to limit claim terms based on the specification.²⁹

C. CCS Fitness, Inc. v. Brunswick Corp. ³⁰

In CCS Fitness, the Federal Circuit added momentum to SciMed's express holding by articulating a concise rule. The CCS Fitness court held that a court may limit otherwise clear claim terms when "the intrinsic evidence shows that the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention."³¹ This rule encompasses the five situations identified by the SciMed court as being appropriate to limit a claim term's meaning. Additionally, this rule appears to address Judge Dyk's criticism in SciMed because the "three category standard" is generally applicable when interpreting claims and, thus, provides guidance to courts, patentees, and the public.

Most recently, in Teleflex the Federal Circuit refined the rule developed in SciMed and CCS Fitness. In Teleflex, the court expressly added to the Johnson exceptions to the general rule that a claim term must take on its ordinary and accustomed meaning.³² To this end, the court expressly held that "[t]he patentee may demonstrate an intent to deviate from the ordinary and accustomed meaning of a claim term by redefining the term or by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope."³³ This most recent articulation of an exception to the "ordinary and accustomed meaning" rule encompasses the rule applied in both SciMed and CCS Fitness and broadens the court's ability to construe claims.

The decision in Teleflex was necessary because the SciMed and CCS Fitness courts did not provide a comprehensive standard for determining when the written description limits the ordinary and plain meaning of terms in the claims. Instead, the courts simply identified circumstances in which it would be appropriate to do so.³⁴ The Teleflex court solved the problems left unresolved in SciMed and CCS Fitness by providing a comprehensive and flexible standard that provides sufficient guidance for when it is acceptable to limit claim terms based on representations made in the written description of the invention.

D. Teleflex, Inc. v. Ficosa North America Corp.³⁵

Both Teleflex, Inc. ("Teleflex") and Ficosa North American Corporation ("Ficosa") manufactured shift cables for use in automatic transmissions for automobiles.³⁶ Teleflex had a successful relationship...