William Westerman | February 11, 2012
Thorner v. Sony
February 1, 2012
Panel: Rader, Moore, Aiken. Opinion by Moore.
The CAFC reverses a determination by the district court that there was no infringement because a limitation was improperly imported into the claim. Because the district court improperly limited the term “attached to said pad” to mean attachment only to an external surface and erred in its construction of the term “flexible”, the CAFC vacated and remanded.
Thorner (owner of USP 6,442,941) sued Sony for patent infringement of the ‘941 patent. The patent related to a tactile feedback system for computer video games. The tactile feedback controller is part of a larger gaming system that operates one or more individual devices. Each device includes some type of actuator that provides tactile feedback to a user in response to certain game activities. For example, actuators in a hand-held game controller may vibrate during a crash in a car racing game.
Two claim limitations are relevant to this appeal, “flexible pad” and “attached to said pad.” The district court construed the term “flexible pad” to mean “capable of being noticeably flexed with ease.”
Additionally, the court turned to construction of the term “attached to said pad.” The court ruled that the word attached was limited to attached to the outside of an object, because the embodiments in the specification consistently use the term “attached” to indicate affixing an actuator to the outer surface of an object and use the word” embedded” when referring to an actuator “embedded” when referring to an actuator inside an object.
The CAFC notes that in claim interpretation:
**The words in a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history. The two exceptions are when the patentee (1) acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.
**To act as his own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning. For example, “Multiple embossed means …” or “[t]he solubilizers suitable according to the invention are defined below. ”
**A similar disavowal of a claim is similarly exacting. The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including the specific expressions of a manifest exclusion or restriction, representing a clear disavowal of claim scope. A mere criticism of one of the two embodiments disclosed in the specification is not sufficient to rise to the level of clear disavowal.
Because the CAFC may review claim construction de novo, it reviewed the district court’s claim construction above. The CAFC holds that the term “attached to said pad” should be given its plain and ordinary meaning which encompasses either internal or external attachment. Regarding the term “flexible” the degree of flexibility is part of the infringement analysis and is not a part of claim construction in this case.
Because the CAFC’s discussion of the doctrine of claim construction in this case is so clear, we have set forth that part of the decision in its entirety below:
We review claim construction de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1455-56 (Fed. Cir. 1998) (en banc). The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996). The use of the term “attached” in this specification does not meet either of these exceptions.
To act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must “clearly express an intent” to redefine the term. Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); see also Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347-48 (Fed. Cir. 2009). “[T]he inventor’s written description of the invention, for example, is relevant and controlling insofar as it provides clear lexicography . . .” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (emphasis added). For example, in 3M Innovative Properties Co. v. Avery Dennison Corp., we held that the patentee acted as its own lexicographer when the specification stated: “‘Multiple embossed’ means two or more embossing patterns are superimposed on the web to create a complex pattern of differing depths of embossing.” 350 F.3d 1365, 1369, 1371 (Fed. Cir. 2004). Similarly, we limited a patentee to particular examples of solubilizers when it stated in the specification that “[t]he solubilizers suitable according to the invention are defined below.” Astrazeneca AB v. Mutual Pharm. Co., 384 F.3d 1333, 1339 (Fed. Cir. 2004).
The standard for disavowal of claim scope is similarly exacting. “Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). “The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002); see also Home Diagnostics, Inc. v. LifeS-can, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a clear disavowal in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.”). For example, in Scimed, the patentee described two different types of catheters in the prior art, those with dual lumens (side-by-side) and those with coaxial lumens. 242 F.3d at 1339. In discussing the prior art, the patentee disparaged the dual lumen configuration as larger than necessary and less pliable than the coaxial type. Id. at 1342. Further, the specification repeatedly described the “present invention” as a coaxial design. Id. Finally, the specification stated: “The intermediate sleeve structure defined above [coaxial design] is the basic sleeve structure for all embodiments of the present invention contemplated and disclosed herein.” Id. at 1343 (emphasis in original). This court held that collectively this amounted to disavowal of the dual lumen design.
Mere criticism of a particular embodiment encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear disavowal. Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (holding that even a direct criticism of a particular technique did not rise to the level of clear disavowal). In Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., we explained that even where a particular structure makes it “particularly difficult” to obtain certain benefits of the claimed invention, this does not rise to the level of disavowal of the structure. 620 F.3d 1305, 1315 (Fed. Cir. 2010). It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words. Only the patentee can do that. To constitute disclaimer, there must be a clear and unmistakable disclaimer.
It is the claims that define the metes and bounds of the patentee’s invention. Phillips, 415 F.3d at 1313. The patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope.