Intellectual Property Law

Inventor testimony regarding intent during patent prosecution irrelevant to claim construction

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

In a recent decision, the Federal Circuit vacated a stipulated judgment of noninfringement on claim construction grounds.  The construction issue dealt with the significance of a limitation that applied to an "at least one" element.  Specifically, the relevant claim required "at least one condylar element," where "the condylar element" had certain features.  The district court held the requirement applied to all condylar elements present in an apparatus, as it was undisputed that either one or two could be used.  Under this construction, it was undisputed there could be no infringement.

The Federal Circuit reversed.  The court held the features described for "the condylar element" could be infringed even if only one of two condylar elements had the claimed features.  The court noted that at least some of the objectives of the invention would still be met if one one of two elements had the claimed features.  The court also rejected an inventor's testimony to the contrary, noting such testimony "is still limited by the fact that an inventor understands the invention but may not understand the claims, which are typically drafted by the attorney prosecuting the patent application."  The court held such testimony as to the subjective intent of the inventor "is irrelevant to the issue of claim construction."

More detail of Howmedica Osteonics Corp. v. Wright Med. Tech., Inc. after the jump.

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Full post as published by FileWrapper on September 29, 2008 (boomark / email).