United States: Would You Like Your Claim Term "Ordinary" Or Specification Defined?

Different panels of the U.S. Court of Appeals for the Federal Circuit, in reviewing claim construction, arrived at different conclusions: one written by Judge J. Linn insisting the ordinary meaning rule must be applied to claim terms and the other written by J. Michel finding the claim terms to be limited by the specification.

In reviewing an International Trade Commission (ITC) action involving three Gemstar patents as applied to the digital cable television set top boxes (DCT-STBs) of various respondents, including Scientific-Atlanta, the Federal Circuit found the ITC erred in construing several claim terms as limited by the disclosure of their respective specifications. Gemstar-TV Guide International, Inc. v. ITC & Scientific-Atlanta, Inc., Case No. 03-1052 (Fed. Cir. Sept. 16, 2004) (Linn, J).

The specification of the patent in suit, describing the preferred embodiment of the inventive television guide display, stated "an innovative cursor . . . for the irregular array . . . is required which satisfies several conflicting requirements." Finding the claim term "visual identification" was not used or defined in the written description, the ITC used the preferred embodiment description to find Gemstar had disclaimed a conventional cursor by requiring the innovative cursor and the "visual identification" must be commensurate with the described innovative cursor.

The Federal Circuit panel, citing Texas Digital, noted a claim term is given the "full range of its ordinary meaning as understood by persons skilled in the relevant art" unless the patentee clearly disclaimed the scope of coverage with "words or expressions of manifest exclusion or restriction." Continuing the analysis and citing to the recently decided Liebel-Flarsheim Co. case, the panel further noted a description of an embodiment, without a demonstrated intent to limit the claims to the embodiment, does not limit the claim scope. The Federal Circuit then held the term "visual identification" was not limited to the innovative cursors described in the `204 specification but was defined by the ordinary meaning of the individual words "visual" and "identification" as defined in dictionaries contemporaneous to the specification.

Applying a similar reasoning, the Federal Circuit overruled the ITC’s construction that limited several terms by the disclosures in the respective patents.

In contrast, a different Federal Circuit panel upheld a district court claim construction finding the scope of claim the term "group" was properly limited by the specification. Irdeto Access, Inc. v. EchoStar Satellite Corp., Case No. 04-1154 (Fed. Cir. Sept. 4, 2004) (Michel, J). This case involved a system for broadcasting digital information signals using layers (or tiers) of complimentary encryptions and decryptions keys. During prosecution, Irdeto’s attorney overcame an indefiniteness rejection of the claim terms "box," "group" and "service" (which were used to describe encryption keys) by stating "we do not believe there is any accepted terminology in the art and since the applicants have described their specific keys in the specification, we believe that the claims are not indefinite." The District Court used this statement to construe the term "group" as a subset of an entire subscriber base, as described and used consistently throughout the specification.

On appeal, Irdeto argued, under Liebel-Flarsheim, the term "group" should be given its ordinary meaning. But, the Federal Circuit stated when a term does not have an accepted meaning in the art, the term is construed "only as broadly as provided for by the patent itself." Since the applicant had informed the examiner, as well as the public, the terms "service," "group" and "box" had no accepted meaning in the art, and the terms are "adequately described in the specification." The Federal Circuit construed the term "group" consistent with its use in the specification, which did not "contemplate a single group made up of the entire subscriber base."

While these two claim construction panel decisions are reconcilable on their facts (indeed Judge Michel was a member of both panels), each appear to represent a different philosophical approach to claim construction. While the plain meaning rule offers this attraction of the simplicity of a "bright-line" rule, it can lead to breathtakingly broad claim constructions, oftentimes far beyond the scope of what the inventors originally thought they had invented and beyond what the U.S. Patent and Trademark Office objectively thought it had patented. Further guidance from the Federal Circuit in the area of claim construction is expected from the decision to be rendered in the currently pending en banc case of Phillips v. AWIT Corp. The recent AstraZeneca case, discussed in this issue, is yet another example of Federal Circuit panel decisions regarding claim construction issues reflecting an intra-circuit tension over application of the plain meaning rule.

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