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Claim construction excluding disclosed embodiment improper absent disclaimer of some kind
January 30, 2008

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.
Oatey brought suit against IPS, claiming infringement of a patent relating to wall-mounted outlet boxes which receive drainage pipes for washing machines and other appliances. Typically, drainage pipes can be inserted into one of multiple ports on an outlet box. Oatey's claimed outlet box included a bottom wall, claiming "first and second juxtaposed drain ports in said bottom wall." A tailpiece extended from the bottom wall of the outlet box such that the drain ports would drain through the tailpiece into a pipe, as seen in Figure 1 below: Figure 1The specification of the patent also included Figure 3, depicted below, which depicts the drain ports created by incorporating a dividing wall into the tailpiece, resulting in two passageways in an oblong opening. Figure 3The parties stipulated that infringement could not be found if the claims of the invention did not encompass the embodiment in Figure 3. After a Markman hearing, the district court determined that the claim language relating to the drain ports required "two separate identifiable physical elements," not a single opening with a dividing wall, as depicted in Figure 3. Further, because the tailpiece extended from the bottom wall of the outlet box, it did not incorporate two juxtaposed drain ports in the bottom wall. Therefore, the court found that the claim language excluded Figure 3 and the court granted summary judgment in favor of IPS. On appeal, the Federal Circuit stated that it is normally improper to "interpret claim terms in a way that excludes embodiments in the disclosed invention," unless the embodiment has been clearly disclaimed in the specification or during prosecution. The court went on to note that there was no disclaimer of the embodiment disclosed in Figure 3 in either the specification or prosecution history. Further, the specification actually disclosed that the oblong opening in the bottom wall "may itself define the drain ports." The court found that the juxtaposed drain ports may be defined by the oblong opening in Figure 3 in conjunction with the dividing wall, and that this definition was not excluded from the claim language reciting drain ports in the bottom wall of the outlet. Further, the court found that the meaning of the claim was not restricted by language in other claims. Thus, the court held that although the claim defined "distinct openings," the language did not "exclude the distinct openings formed as shown" in Figure 3. As a result, the court reversed the district court's claim construction, and remanded for further proceedings. To read the full decision in Oatey Co. v. IPS Corp., click here.

Patently-O provides this report, and the Patent Prospector offers his thoughts here.

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