United States: Plain Meaning Rule Preempts Description of Preferred Embodiment

The U.S. Court of Appeals for the Federal Circuit vacated the grant of a summary judgment of non-infringement finding that the patent claims in question were construed too narrowly by the district court. Prima Tek II, L.L.C. v. Polypap, Case No. 02-1164 (Fed. Cir. February 5, 2003).

The patent-in-suit describes a decorative assembly for a floral grouping. The district court construed the claim term "floral holding material" to be limited to "a three-dimensional solid, semi-solid, or granular material capable of giving support to individual flowers when their stems are inserted into the material." The district court also required that the floral stems be "inserted into and through" the floral holding material. Based on its construction, the district court found that the product in issue did not infringe the Prima Tek patent, either literally or under
the doctrine of equivalents, because "the flowers and stem ends are not actually inserted into and through the actual plastic material of the cone."

The Federal Circuit reversed, reasoning that the district court impermissibly read limitations into the claims from the written description. "[N]either the phrase ‘inserted into’ nor ‘inserted through’ appears in any of the asserted claims. Instead, all of the claims at issue require that the ‘floral holding material’ be constructed of ‘material capable of receiving a portion of the floral grouping and supporting the floral grouping without any pot means.’ This claim language does not require that the stem end of the flower be inserted into and through the floral holding material."

The Court rejected Polypap’s attempt to limit the claim terms by reference to the written description and prosecution history that indicated that the "floral holding material" was either floral foam or soil. "[W]e find this argument unpersuasive," said the Federal Circuit. "First, the written description does not describe ‘with reasonable clarity, deliberateness, and precision’ the definition of ‘floral holding material’ proposed by Polypap." The Federal Circuit pointed out that the written description only states that the floral holding material "may be" (not must be) foam or soil. "[I]ndeed the many uses of the term throughout the [] patent are consistent with a broader definition, one encompassing material of any shape or type."

The Federal Circuit, citing the general rule "that claims of a patent are not limited to the preferred embodiment, unless by their own language," noted that the written description used the term "floral holding material" at various points to refer to material of any shape or type, and that no "special and particular definition" had been created. Thus, the Court found "there is nothing in this case that warrants departing from the general rule." The Court also concluded "that the prosecution history does not attribute a special meaning to the phrase ‘floral holding material,’ as there were no express representations made in obtaining the patent regarding the scope and meaning of the claim terms.