United States: Specification Provides Proper Construction To Resolve Ambiguities In Claim Language

In World Class Technology Corp. v. Ormco Corp., Nos. 13-1679, 14-1692 (Fed. Cir. Oct. 20, 2014), the Federal Circuit affirmed the district court's construction of the claim term "support surface" and the stipulation of noninfringement.

Ormco Corporation ("Ormco") owns U.S. Patent No. 8,393,896 ("the '896 patent"), which describes a bracket that attaches to a tooth for orthodontic braces. The '896 patent states that the bracket includes a slot to hold an archwire that connects the teeth, with a slide that moves across a slot opening to hold the wire in place. The specification also explains that the slide moves at an angle away from the gums, avoiding gum contact, when moving from a slot-closed to a slot-open position.

World Class Technology Corporation filed for DJ for noninfringement of five patents owned by Ormco. Ormco counterclaimed, alleging infringement of the '896 patent and seeking a preliminary injunction. During claim construction, the parties disputed the meanings of the terms "support surface" and "ledge" in independent claim 1 of the '896 patent. The district court denied the preliminary injunction and found that the "support surface" "at least partially supports and guides the movable member [slide] during movement between the open position and the closed position." Slip op. at 5 (quoting World Class Tech. Corp. v. Ormco Corp., 964 F. Supp. 2d 1273, 1280, 1285 (D. Or. 2013)). The district court also adopted a complementary construction of the term "ledge" as contacting the slide only when the slide is in the closed position. The parties stipulated to noninfringement under the district court's "support surface" construction. The parties also stipulated to noninfringement of the other five patents. The district court entered a final judgment. Ormco appealed.

"Where, as here, the claim language itself leaves interpretive questions unanswered, '[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.'" Slip op. at 7-8 (alteration in original) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).

On appeal, the Federal Circuit found that the term "support surface" does not, by itself, have a clear, unambiguous meaning with respect to the support surface's role during movement of the slide. The Court reasoned that although the claim term "requires a surface that provides support, and the slide is undisputedly what must be supported, the language itself does not resolve when the slide must be supported." Id. at 6. The Court explained that the claim requires two surfaces—the "support surface" and the "ledge"—and gives the two surfaces different names, suggesting that they have different functions. The Court also noted that the two surfaces line up differently relative to the base surface of a slot and that the claim requires a "specific interaction" for the support surface, but no analogous requirement for the ledge surface. Id. at 7. Finding that this language "leaves uncertainty about whether . . . the slide must move along the support surface," the Court turned to the specification to resolve the ambiguity. Id.

Reviewing the specification, the Court concluded that the district court correctly construed "support surface." The Court explained that, "[c]ritically, the specification in this case identifies gum avoidance as the sole purpose of the acute angle the support surface must make with the slot base," but under Ormco's claim construction, the acute angle would not serve this stated purpose. Id. at 8. Thus, the Court considered Ormco's construction to be "unmoored from, rather than aligned with, the description of the invention." Id. Furthermore, the Court explained that neither the written description nor the drawings disclosed the arrangement Ormco sought to cover. The Court also identified other language in the specification that was contrary to Ormco's construction, including the specification's use of the phrase "translation plane" in identifying an acute angle of the support surface. Id. The Court reasoned that "translation" refers to the movement of the slide along a plane and that the '896 patent ties the translation plane to the support surface.

The Court concluded that the specification "strongly implies that it is along the support surface, not the ledge surface, that the slide generally moves from open to closed position." Id. at 9. Additionally, the Court explained that the specification distinguishes between the support surface and the ledge surface, noting that the support surface is linked with slide movement, but the ledge surface is not. The Court determined that these differences were inconsistent with Ormco's construction, and concluded that the district court correctly resolved the uncertainties in the claim construction.

The Court next considered, and rejected, Ormco's claim differentiation argument that the differences between claim 6 and claim 1 require a broad construction of claim 1. Although noting that claim 6 recites that "the support surface defines a translation plane," the Court explained that its construction of "support surface" did not give claim 1 the same scope as claim 6 because claim 6 requires that the support surface form a corner with one side of the slot, whereas claim 1 does not. Id. at 9-10.

The Court then considered the prosecution history, observing that neither party gave the prosecution history substantial weight, and found that it did not support Ormco's position or support a different construction of "support surface" from the one compelled by the specification.

Accordingly, the Court affirmed the district court's decision.

Judges: Prost, Taranto (author), Hughes

[Appealed from D. Or., Magistrate Judge Acosta]

This article previously appeared in Last Month at the Federal Circuit, November 2014

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