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CAFC: Extrinsic Evidence OK When Patentee Chooses Inconsistent Claim Language

By Peter Zura

Helmsderfer v. Bobrick Washroom Equipment, Inc. (2008-1027), June 4, 2008

The patentee appealed the claim construction for the term "partially hidden from view" on a patent related to baby diaper changing stations. The district court construed the term to mean "hidden from view to some extent but not totally hidden from view."

In contrast, the patentee agued that the plain meaning of the term "partially" would include "totally hidden." In support of its argument, patentee pointed to the written description which stated that a top surface is "generally hidden from view."

The CAFC disagreed with the patentee. Looking to the claim language, the court noted that the terms "generally" and "at least" were used elsewhere in the claim. Applying CAFC precedent, "[i]n absence to evidence to the contrary, [it must be presumed] that the use of these different terms in the claims connote different meanings." Since there was no evidence to rebut the presumption, the court declined to give "partially" the same meaning as "generally" or "at least partially."

In addition, the CAFC found the district court's use of dictionaries proper when construing the term:

Here, partially is not defined in the specification. In fact, the phrase "partially hidden from view" does not even appear in the written description. The district court?s statement that there is no clear meaning of the term "partially hidden from view" apparent from the intrinsic record is correct.

The patentee also argued that the district court's construction was erroneous because it excluded both the preferred embodiment and every illustrated embodiment from the claims. Again, the CAFC disagreed:

Our case law generally counsels against interpreting a claim term in a way that excludes the preferred embodiment from the scope of the invention . . . It is true that the plain meaning of "partially hidden from view" does not include totally hidden from view, and that therefore claims 6-7 do not cover the preferred embodiment or the other illustrated embodiments. However, this does not mean that these embodiments are all excluded from the scope of the invention, but rather that they are excluded from the scope of these particular claims. Without opining on the construction of claims not at issue in this appeal, we note that none of the other independent claims of the ?928 patent recite the term "the platform top surface is partially hidden from view." Therefore, our construction of claims 6-7 leaves open the possibility that claims not at issue in this appeal encompass omitted embodiments. It is often the case that different claims are directed to and cover different disclosed embodiments. The patentee chooses the language and accordingly the scope of his claims.

Moreover, Brocar?s proposed construction is not consistent with any plain meaning of the term "partially" as interpreted in light of the specification. In this case there is only one ordinary meaning attributable to the word "partially" and this meaning does not include "totally." As Brocar did not act as its own lexicographer and alter the ordinary meaning of the term "partially," we cannot construe these particular claims to encompass the preferred embodiment or other illustrated embodiments. Courts cannot rewrite claim language.

AFFIRMED

Full post as published by Two-Seventy-One Patent Blog on June 05, 2008 (boomark / email).