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Same claim term can be interpreted differently in the same claim if specification warrants

By McKee, Voorhees & Sease, P.L.C.

In a decision last week, the Federal Circuit decided a case addressing the limitations of what constitutes "insolubly ambiguous" claim terms in order to amount to indefiniteness.  The district court held the asserted claims invalid because they impermissibly mixed two statutory classes of subject matter, as well as because they required construing the same term differently in the same claim for the claims to make sense.

The Federal Circuit reversed the invalidity holding, finding that while the claims were written in an "unconventional" format, that format did not result in mixing multiple classes of statutory subject matter in the same claim.  Further, while the court acknowledged that typically the same term is given the same construction throughout a claim (particularly when the second instance is prefaced with "the" or "said," thereby making reference to the first use), in this case, there was no "uniform language" surrounding the term that mandated an identical construction, and as a result, the claim was not indefinite.

Not all was good for the patentee, however, as the court affirmed the district court's claim construction.  The patentee stipulated that if the claim construction was affirmed, there was no infringement, and as a result, the district court's summary judgment of noninfringement was affirmed.

More detail of Microprocessor Enhancement Corp. v. Texas Instruments, Inc. after the jump.

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Full post as published by FileWrapper on April 09, 2008 (boomark / email).