Federal Circuit Dispenses with Narrow Claim Construction

Ventana Medical Systems, Inc. v. Biogenex Laboratories, Inc., [06-1074](December 29, 2006)[PROST, Lourie, and Dyk] The Federal Circuit vacated judgment of non-infringement of a patent on a system for automated staining of microscope slides, and remanded for further proceedings.
BRIEF: The sole issue on appeal was the meaning of the word “dispensing” reagent in the claims. The district court construed “dispensing” to mean “direct dispensing” meaning that reagent is dispensed directly from the reagent container. The district court said that the written description and figures supported a narrow construction of dispensing because all of the disclosed embodiments dispense reagent directly from the bottom of the reagent container without using any intermediate transfer, and because of disclaimer during prosecution. The Federal Circuit agreed with Ventana that there was nothing in the record to suggest that a person of ordinary skill in the art would . The Federal Circuit found no language in the claims that would limit dispensing to direct dispensing. The Federal Circuit declined to interpret general statements about the prior art to effect a complete surrender of all types of dispensing except direct, particularly where the prior art included direct dispensing, and in any event the inventors were not distinguishing over the prior art. The Federal Circuit also rejected the argument that the claims had to be limited to cover the novel features, saying that patentees are not required to include within each of their claims all of the advantages or features described as significant or important in the written description. “An invention may possess a number of advantages or purposes, and there is no requirement that every claim directed to that invention be limited to encompass all of them.” The Federal Circuit then rejected the argument of prosecution disclaimer, noted that “the doctrine of prosecution disclaimer generally does not apply when the claim term in the descendant patent uses different language. Although the Federal Circuit agreed that statements made by the inventor during continued prosecution of a related application can, in some circumstances, be relevant to claim construction, the Federal Circuit rejected the argument that “dispensing” had been limited by statements in prosecuting subsequent applications. The Federal Circuit found that differences in the claims made statements from subsequent production irrelevant to the current claims.