Intellectual Property Law

Claim construction excluding disclosed embodiment improper absent disclaimer of some kind

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

In a decision today, the Federal Circuit reversed a district court's claim construction and the associated summary judgment of noninfringement.  The district court's construction of one of the claim limitations resulted in certain embodiments of the invention disclosed in the figures to be excluded from the scope of the claims.  Based on this construction, the parties stipulated that there was no infringement, and the court entered summary judgment of noninfringement.

The Federal Circuit reversed.  The court noted that claims are typically not interpreted in a way that excludes disclosed embodiments of the invention.  Such a construction may be proper if the embodiments are clearly disclaimed in the specification or in the prosecution history.  However, there was no such disclaimer in this case, and as a result the district court's construction was unduly restrictive.  Based on the revised construction, the district court's summary judgment was vacated, and the case remanded.

More detail of Oatey Co. v. IPS Corp. after the jump.     
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Full post as published by FileWrapper on January 30, 2008 (boomark / email).