The Federal Circuit recently issued opinions concerning the law of claim construction, and in particular addressed the issues
of (1) when it is proper to constrict the ordinary meaning of a patent claim term, and (2) when the language in a claim's
preamble is to be construed as a claim limitation.
Importing Limitations into Patent Claims
In May 2002, the Federal Circuit issued its opinion in CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002). Although the court did not set forth a new standard, it provided a useful summary of four
ways in which "a court may constrict the ordinary meaning of a claim term." Id. at 1360. First, a claim term will not receive its ordinary meaning if the patentee acted as his or her own lexicographer
and clearly set forth a definition of the term in either the specification or the prosecution history that conflicts with
the ordinary meaning of the term. See id. at 1366. Second, a claim term will not carry its ordinary meaning if the intrinsic evidence shows that the patentee distinguished
that term from the prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a
particular embodiment as important to the invention. See id. at 1366-67. Third, a claim term will not be accorded its ordinary meaning if the term chosen by the patentee so deprives
the claim of clarity as to require an examination of other intrinsic evidence to determine a definite meaning. See id. at 1367. Fourth, if the patentee elects to phrase a claim term in "means-plus-function" format, such term will cover nothing
more than "the corresponding structure, material, or acts described in the specification and equivalents thereof," pursuant
to 35 U.S.C. §112, ¶ 6. See CCS Fitness, 288 F.3d at 1367.
The Federal Circuit further explored the issue of importing limitations into a claim in Teleflex, Inc. v. Ficosa North America Corp., 2002 U.S. App. LEXIS 12361 (Fed. Cir. June 21, 2002). Teleflex included an extended discussion of prior Federal Circuit decisions that have addressed the issue of whether and when a court
should incorporate limitations from the specification into a claim, and how this differs from merely interpreting claims in
view of the specification. After considering these precedents, the Federal Circuit wrote that
claim terms take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to deviate from the
ordinary and accustomed meaning of a claim term by redefining the term or by characterizing the invention in the intrinsic
record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.
Id. at *26-27. Determining what constitutes a "manifest exclusion or restriction" under the Teleflex guideline in a particular case will likely be hotly contested in future litigation.
Preamble as a Claim Limitation
The Federal Circuit also recently opined on another claim construction issue with a rich history. In Catalina Marketing Int'l
v. Coolsavings.com, 289 F.3d 801 (Fed. Cir. 2002), the Federal Circuit once again engaged in the thorny inquiry of how to
determine when language in a claim's preamble constitutes a claim limitation. After first recognizing that there is "[n]o
litmus test" for determining "when a preamble limits claim scope," the Federal Circuit waded into a lengthy discussion of
its prior holdings on this issue. To begin with, the court noted that a decision on whether to treat a preamble as a limitation
is a determination "resolved only on review of the entire[] . . . patent to gain an understanding of what the inventors actually
invented and intended to encompass by the claim."
The court then observed that a preamble generally does not limit claim scope if it merely describes the "intended use or asserted
benefits" of the claimed invention. But, said the court, "[w]hether a preamble stating the purpose and context of the invention
constitutes a limitation of the claimed process is determined on the facts of each case in light of the overall form of the
claim, and the invention as described in the specification and illuminated in the prosecution history."
The court then recited the familiar formula that the preamble is more likely to be viewed as a limitation when it is used
to recite essential structure or steps, or if it is "necessary to give life, meaning, and vitality" to the claim. According
to the court, examples of situations in which a preamble may operate as a claim limitation include when a patentee drafts
a claim using the Jepson format (see Epcon Gas Systems, Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1029 (Fed. Cir. 2002)),
when a preamble term provides antecedent basis for a subsequent term in the claim (see Bell, 55 F.3d at 620), and when the
preamble is essential to understand terms or limitations in the claim body (see Pitney Bowes, 182 F.3d at 1306).
The Catalina Marketing court broke no new ground in the area of preamble interpretation, and given that no uniform test has
emerged despite the numerous decisions that have addressed this issue, it is not surprising that a court could leave this
seemingly straightforward question still murky after seeking to provide clarity. Nonetheless, the decision represents an effort
to summarize the prior law in the area and thus to provide patent litigation practitioners "guideposts" against which to argue
their respective claim construction positions.
