Addressing the issue of claim construction in terms of statements made in a public record, the U.S. Court of Appeals for the Federal Circuit held that it was not bound to the U.S. Patent and Trademark Office’s (USPTO) interpretation of a claim, even in reexamination proceedings. SRAM Corp. v. AD-II Eng’g, Inc., Case No. 05-1365 (Fed. Cir., Oct. 2, 2006) (Linn, J.).
SRAM Corporation, the owner of a patent for bicycle gearshift actuators, filed suit alleging that AD-II Engineering, a manufacturer of gear shifters, infringed its patent. AD-II Engineering argued that the patent at issue was invalid because it was anticipated by prior art. On cross summary judgment motions on validity, the district court construed the claims to require "precision index downshifting." On the basis of that construction, it issued an order that the prior art asserted by AD-II did not anticipate the claims. AD-II appealed.
The Federal Circuit, finding that the district court erred in construing the claim limitation in issue, vacated and remanded the case. The Federal Circuit held that the district court erred by importing the limitation "precision index downshifting" from the specification into the claims since the claims did not specifically claim a positive indexing feature, but instead stated a broad two-step method that could apply to both indexed and non-indexed shifters. Even though the specification described a gear-shifting system that provided for precise index shifting, the claim language did not recite indexing at all.
Notably, the Federal Circuit declined SRAM’s invitation to adapt the district court claim construction on the basis that it was consistent with the position taken by the USPTO over the course of their re-examination proceedings. The Federal Circuit noted in its opinion, "While the Patent and Trademark Office (the PTO) generally gives claims their broadest reasonable interpretation consistent with the specification (citations omitted) paradoxically, in this case, the PTO construed the claim narrowly, rather than broadly," in effect committing the same error as the district court.
Not to put too much of an exclamation mark on this discussion, the panel concluded "this court is not bound by the USPTO’s claim interpretation because we review claim construction de novo (citation omitted)."
Based on its new claim construction, the Court remanded the case for consideration of the anticipation issue.
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