Patent Law

Outlet Inclusion

By Gary Odom and Jordan Kuhn

Oatey sued IPS for infringing its patent on residential washing machine outlet boxes, 6,148,850. After Markman, the district court granted summary judgment of non-infringement, based on a claim construction excluding a depicted embodiment. The exclusion was excluded on appeal.

Oatey v. IPS (CAFC 07-1214)

The claimed technology -

The patented invention concerns washing machine outlet boxes, which are boxes that are installed in wall recesses during construction of a house in order to collect hoses for the input and output water flow of washing machines and other household appliances, particularly air conditioners.

The district court had, in its claim construction, excluded an embodiment which had been shown in Figure 3 of the specification; leading to the non-infringement decision.

The district court postponed its claim construction until this court issued its en banc decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). The Phillips decision confirmed that "[i]t is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Id. at 1312 (citing Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In addition, Phillips confirmed the importance of the specification in claim construction, 415 F.3d at 1315, and that, in construing the claims of a patent, the court should also consider the patent's prosecution history if it is in evidence, id. at 1317.

We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification. E.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007) (rejecting proposed claim interpretation that would exclude disclosed examples in the specification); Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1369 (Fed. Cir. 2003) (finding district court's claim construction erroneously excluded an embodiment described in an example in the specification, where the prosecution history showed no such disavowal of claim scope); see also Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that a claim interpretation that excludes a preferred embodiment is "rarely, if ever, correct"). However, we have interpreted claims to exclude embodiments of the patented invention where those embodiments are clearly disclaimed in the specification, see SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1344 (Fed. Cir. 2001) (excluding subject matter from claim scope based on clear disclaimer in the specification), or prosecution history, see North Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1345-46 (Fed. Cir. 2005) (excluding from claim scope certain embodiments in the drawings based on disclaimer during prosecution).

There was no reason to exclude the Figure 3 embodiment.

There is no issue in this case of disclaimer or estoppel during prosecution, as would preclude recovery of such lost scope, and IPS offers no support for its contrary suggestion.

We conclude that the embodiment in Figure 3 was improperly excluded from the scope of claim 1. See MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007) (rejecting claim construction that would exclude embodiments illustrated in the drawings); Lava Trading, Inc. v. Sonic Trading Mgmt., LLC, 445 F.3d 1348, 1353-55 (Fed. Cir. 2006) (rejecting claim construction that "excluded embodiments disclosed in the specification" including embodiments in the drawings); Vanderlande Industries Nederland BV v. United States Int'l Trade Comm'n, 366 F.3d 1311, 1320, 1322 (Fed. Cir. 2004) (declining to limit the term "glide surface" to a specific embodiment where the descriptive text includes other embodiments).

Vacated and remanded.

Full post as published by The Patent Prospector on January 30, 2008 (boomark / email).