In affirming a summary judgment of non-infringement based on a narrow claim construction, the U.S. Court of Appeals for the Federal Circuit has confirmed dictionary definitions are not preemptive of the intrinsic evidence, and courts are not permitted to disregard the intrinsic record in claim construction. C.R. Bard, Inc. v. United States Surgical Corp., Case No. 04-1135 (Fed. Cir. Oct. 29, 2004) (Michel, J.).
In district court, Bard asserted that U.S. Surgical infringed its patent for a mesh surgical "plug" device, i.e., an implantable medical device made out of fabric used to occlude and repair hernias. The lower court ruled on summary judgment that there was no infringement because Bard’s patent was limited to fabric plugs having pleats. Bard appealed the summary judgment, arguing the district court improperly limited the asserted claim to require pleats. The disputed claim language regarded the terms "conformable" and "pliable," which were used in the claim to describe the characteristics of the claimed plug.
On appeal, Bard argued that the district court improperly ignored the ordinary meaning of commonly known claim terms in favor of an implied definition derived from the intrinsic evidence. In support, Bard argued that the Federal Circuit’s decision in Texas Digital Sys., Inc. v. Telegenix, Inc. (IP Update, Vol. 5, No. 11, Nov. 2002) held the ordinary meaning should control, and dictionary definitions "trump" the intrinsic record unless there is a clear definition presented by the patentee or a disavowal of the ordinary meaning.
The Federal Circuit affirmed, noting that Texas Digital notwithstanding, dictionary definitions do not trump the intrinsic record, and the intrinsic record cannot be disregarded. The Federal Circuit next considered the disputed claim construction and concluded the extrinsic dictionary definitions urged by Bard were irrelevant because the patentee had limited the scope of the claim in the intrinsic record, and the dictionary definitions offered by Bard were misapplied to the claim. The Federal Circuit relied on express statements in the intrinsic record to limit the invention to pleated plugs despite Bard’s arguments that those limitations regarded only a single embodiment of the invention. The Court also relied on a reference to pleats in the "summary of the invention" to infer the entire invention, and not just a single embodiment, was limited to pleated plugs. Because of these express and implied limitations, the Federal Circuit concluded the patentee had disavowed non-pleated plugs, thereby rendering Bard’s dictionary definitions irrelevant to the claim construction analysis.
The Court also held Bard’s dictionary definitions of the disputed terms "comfortable" and "pliable" were misapplied to the meaning of the term "plug." Specifically, the court found the references to "pleats" in the intrinsic record limited the structure of the plug to a pleated plug, and the disputed terms referred solely to the effects produced by the claimed structure. In other words, the claimed structure was limited to a plug with pleats, and the recited functional aspects did not conflict with or alter that structure. In short, the Federal Circuit rejected the argument that the terms used to describe the characteristics of the plugs defined the plug’s claimed structure.
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