Importing Limitations from the Specification into the Claims: When Is It Proper?

• Feb 28 2017
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• Category: News

Originally published in the New York Intellectual Property Law Association’s December 2016- January 2017  edition of  The Report.  https://www.nyipla.org/nyipla/TheReport.asp

By William Valet*

Claim construction is a seemingly simple proposition that continues to challenge even the most seasoned patent practitioners, as well as the courts. After all, it is well understood that claim terms are to be given their ordinary and customary meaning as understood by one having ordinary skill in the art at the time of the invention.[1]

If, on its face, claim construction seems rather straight- forward, where does the problem lie? Perhaps giving rise to the difficulty of interpreting claim language is the conundrum that the claims themselves are not dispositive.[2] Rather, as noted in Phillips v. AWH Corp., “the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.”[3]

Therein lies the issue: by reading the claims in view of the specification, it is exceedingly difficult to merely interpret the claims in view of the specification, rather than to import limitations into the claims from the specification. This difficulty is a problem, because importing limitations from the specification is regarded by the courts as being “‘one of the cardinal sins of patent law.’” [4]

But, if importing limitations into claim terms is considered to be a major breach, how can the Court of Appeals for the Federal Circuit justify the result reached in the unpublished, nonprecedential opinion ProFoot, Inc. v. Merck & Co., No. 2016-1216 (Fed. Cir. Oct. 26, 2016), which seemingly imports limitations from the specification into the claims? The answer to this question depends upon the specific facts of this case.

The district court in ProFoot was tasked with interpreting claims 1 and 3 of ProFoot, Inc.’s (“ProFoot”) U.S. Patent No. 6,845,568 (“the ’568 Patent”). For purposes of brevity, only claim 1 will be discussed. Claim 1 recites:

1. A method of fitting an individual with right and left foot inserts which place the ankles of the individual in a neutral position comprising the steps of:

for creating a right foot insert, having the individual place the right foot on a neutralizer while elevating the left foot off of the neutralizer;

using the neutralizer to determine the angle necessary to place the right ankle in a neutral position;

providing an insert having an angle which represents the neutral state for the right ankle;

for creating a left foot insert, having the individual place the left foot on a neutralizer while elevating the right foot off of the neutralizer;

using the neutralizer to determine the angle necessary to place the left ankle in a neutral position; and

providing an insert having an angle which represents the neutral state for the left ankle.[5]

During a claim construction proceeding, the district court determined that the term “neutralizer” is “‘a device that has a housing, a protractor, and an angularly adjustable plate capable of supporting the foot.’”[6] Based upon this claim construction alone, the parties stipulated that Merck & Co. (“Merck”) did not infringe any claims of the ’568 Patent.[7]

The issue on appeal was whether, when viewed in the context of the specification, the district court’s construction of the claim term “neutralizer” was proper.

ProFoot argued that the district court erred because its construction of the term “neutralizer” was “too narrow because the claims are silent as to what components comprise the neutralizer, and a person of ordinary skill in the art would recognize that a ‘neutralizer’ is simply just some kind of measuring device.”[8] The Federal Circuit countered ProFoot’s argument by pointing out that “‘the only meaning that matters in a claim construction is the meaning in the context of the patent.’”[9]

To analyze the claim term “neutralizer,” the Federal Circuit initially reviewed the claim itself, “as ‘the context in which a term is used in the asserted claim can be highly instructive.’”10 The court noted that “the claims state that the neutralizer is something that the athlete steps on, one foot at a time . . . and is ‘us[ed] . . . to determine the angle necessary to place the [left/right] ankle in a neutral position.’”[11]

According to the Federal Circuit, this language “by itself, is not strong enough to require these components, [however] it at least supports the district court’s construction.”[12]. To further support its analysis, the Federal Circuit deter- mined that “[t]he specification . . . closes this gap.”[13] The court stated that “‘[w]hen a patent ‘repeatedly and consistently’ characterizes a claim term in a particular way, it is proper to construe the claim term in accordance with that characterization.’”[14] Importantly, the specification of the ’568 Patent discloses only two embodiments of the neutralizer, each of which discloses all of the components listed in the district court’s construction.[15] Specifically, the specification of t’568 Patent states:

The present invention includes a number of components such as a foot neutralizer 10 as shown in FIG. 1. . . . Neutralizer 10 includes a housing 12, protractor 14, an angularly adjustable plate 16, crank 18 with threaded rod 19 having threads 23 that coact with threads 21 on support 22, and rod 24. . . .

FIG. 2 shows an alternate embodiment of a foot neutralizer 100. It includes a housing 102, angularly adjustable plate 104, foot rests 106 and 108, upright support bar 110, and positionable horizontal bar 112 that adjustably slides along bar 114 of support 110. Also included is protractor 116.[16]

The court further noted that “the abstract states that ‘[t]he neutralizer has a housing, protractor, and an angularly adjustable plate capable of supporting the foot.’”[17]
Because the ’568 Patent failed to disclose any embodi¬ment of a neutralizer that did not include a housing, protractor, or angularly adjustable plate, nor did it provide any indication that a neutralizer omitting these components was contem¬plated, the Federal Circuit concluded that “inclusion of these components is consistent with the specification of how the neutralizer is used.”[18] Therefore, “because the specification consistently and repeatedly disclose[d] that the neutralizer include[d] the housing, protractor, and angularly adjustable plate components, the district court did not err in including them in its construction.”[19]

The Federal Circuit also analyzed the prosecution his¬tory of the parent patent, U.S. Patent No. 6,564,465 (“the parent ’465 Patent”), which through a series of amendments recited a similar process to that of claim 1 of the ’568 Patent, but specifically required “‘a neutralizer . . . said neutralizer having a housing, protractor, an angularly adjustable plate capable of supporting a foot’” to perform the process.20 The court acknowledged that “[a]lthough this history arose during prosecution of the parent ’465 patent, it is still relevant here as evidence of the inventor’s understanding of ‘neutralizer’ at the time.”[21]

The Federal Circuit stated that “nowhere in the ’568 patent does the inventor indicate that he intended the ‘neutralizer’ of the ’568 patent to be different from the ‘neutralizer’ in the parent ’465 patent.”[22] The court therefore concluded that “the prosecu¬tion history of the parent ’465 Patent also supports the district court’s inclusion of the housing, protractor, and angularly adjust¬able plate components within the meaning of ‘neutralizer.’”[23]

ProFoot attempted to rebut this finding by arguing that the prosecution history of the parent ’465 Patent suggests that the “neutralizer” of the ’568 Patent was intended to be differ¬ent from the “neutralizer” of the parent ’465 Patent because “claim 1 of the parent ’465 patent recites ‘said neutralizer having a housing, protractor, an angularly adjustable plate capable of supporting a foot’ but claim 1 of the ’568 patent does not.”[24] The Federal Circuit rejected this argument as “turn[ing] the correct analysis on its head.”[25] Specifically, the court ruled that “the overwhelming similarities between the parent ’465 patent and the ’568 patent suggest that the inventor intended ‘neutralizer’ to have the same meaning between the two patents. If he had not, he could have said so explicitly, or revised the ’568 patent to include other, broader embodiments of the neutralizer.”26 The Federal Circuit there¬fore concluded that “when read in combination with the rest of the intrinsic evidence, the prosecution history supports, rather than refutes, the district court’s construction.”27 In view of this conclusion, the Federal Circuit affirmed the district court’s construction of the claim term “neutralizer.”[28]

Although nonprecedential, ProFoot provides another important example of how the Federal Circuit is applying the holding of ICU Medical, Inc. v. Alaris Medical Systems, 558 F.3d 1368, 1374-76 (Fed. Cir. 2009), where the term “spike” was held to mean “an elongated structure having a pointed tip for piercing the seal, which tip may be sharp or slightly rounded” and not to mean “an upward projection,” and similar decisions when interpreting claim terms. ProFoot thus illustrates how the specification can impact the scope of the claims (often negatively), particularly in a manner that is contrary to the practitioner’s intent.

In view of ProFoot, practitioners should not only be aware of how claim terms are defined in the specification but, also, how those claim terms are referred to throughout the specification. Therefore, it may be prudent to disclose as many possible embodiments of the invention as feasible. Further, it is also important to question whether certain com¬ponents are required for the claimed invention to properly function. Practitioners should also consider adding qualify¬ing language, such as “although generally illustrated as X, it is contemplated that X may be any suitable [component] capable of [being used in that particular situation]” or “X may be any suitable [component] capable of [being used in that particular situation] known in the art” in order to avoid hav¬ing the claims limited to only those embodiments disclosed in the specification.

The inventor can be a key player in identifying required components or any additional variants of components that may be utilized to enable the invention other than those initially described. Practitioners should thus seek to involve the inventor early and often while drafting a patent applica¬tion. By maintaining open communication with the inventor, the practitioner may be able to draft a more comprehensive patent application that, ultimately, may avoid inadvertently narrowing the claims.

ProFoot also highlights the fact that the prosecution history of parent applications may be utilized to construe the meaning of claim terms. With this in mind, practitioners should ensure that arguments made during prosecution say no more than is necessary to overcome the cited art. Prac-titioners should focus on making concise arguments that highlight the differences between the claims and the cited art, and that reference only those portions of the claims and art that are necessary.

The lessons gleaned from ProFoot also extend to litiga¬tion. Practitioners should be aware that the specification may be used to construe a claim more narrowly than it appears on its face. Therefore, if the specification provides only a few embodiments of an invention or repeatedly and consistently refers to a claim term having specific elements, the claim term may be interpreted as requiring those elements. This is important for practitioners to keep in mind when determining whether or not a claim is infringed.

If nothing else, ProFoot is yet another reminder that practitioners should be mindful of how they draft a pat¬ent application, and should keep in mind that research and planning do not start and end at receipt of the invention disclosure. It is incumbent upon practitioners to expand the scope of the claims by including as much detail as possible in the specification and by identifying as many variations of components or embodiments of the invention as possible. ProFoot highlights the pitfalls that may befall practitioners who fail to go beyond the bare minimum when drafting pat¬ent applications.

(Endnotes)

* William Valet is an associate at Carter DeLuca Farrell & Schmidt LLP. He is involved in patent preparation and prosecution in a wide range of technologies, including medical devices, computer hardware and software, and optics and opti­cal systems.

[1] See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc).

[2] See Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (“‘We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history.’”).

[3] 415 F.3d at 1313.

[4] Id. at 1319-20 (quoting SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001)).

[5] ProFoot, Inc. v. Merck & Co., No. 2016-1216, slip op. at 4 (Fed. Cir. Oct. 26, 2016) (emphasis in original) (hereafter “Profoot Slip Op.”).

[6] Id. at 4.

[7] Id. at 5.

[8] Id.at 5-6.

[9] Id. at 6 (quoting Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016)).

]10] Id. (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc)).

[11] Id. (quoting the ’568 Patent, col. 5, ll. 11-13; col. 6, ll. 3-5; col. 5, ll. 14-15; col. 6, ll. 6-7).

[12] Id. at 7.

[13]Id.

[14] Id. (quoting GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1370 (Fed. Cir. 2016)).

[15] Profoot Slip Op. at 7.

[16] Id. (emphasis in original).

[17]Id. (quoting the ’568 Patent, abstract) (emphasis in original).

[18] Id. at 8.

[19] Id.

[20] Id. at 8.

[21] Id. at 8-9 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc)).

[22] Id. at 9.

[23] Id. at 9-10.

[24] Id. at 10.

[25] Id.

[26] Id. (emphasis added).

[27] Id.

[28] Id. at 5.