The Federal Circuit Does Not Normally Interpret Claims to Exclude Embodiments Disclosed in the Specification

Oatey Co., v. IPS Corporation, [2007-1214] (January 30, 2008)[NEWMAN, Schall, Linn] The Federal Circuit modify the district court's claim construction, vacated summary judgment that that U.S. Patent No. 6,148,850, owned by Oatey, wsa not infringed by IPS Corporation, and remanded.
SIGNIFICANCE: The Federal Circuit appeared to create a new canon of claim construction requiring that all the claims in the patent be interpreted in a way that covers cover all of the preferred embodiment
BRIEF: At issue was a claim directed to a washing machine outlet box comprising a housing including a bottom wall having "first and second juxtaposed drain ports in said bottom wall".
The district court construed the clause "first and second juxtaposed drain ports in said bottom wall" as "two separate identifiable physical elements that are adjacent or near each other." The court further determined that this clause requires that there be two separate physical openings in the bottom wall of the outlet box, as shown in Figure 2, and not a single opening divided by a wall in the attached tailpiece, as shown in Figure 3.
The Federal Circuit said "We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification." The Federal Circuit conceded that it has interpreted claims to exclude embodiments of the patented invention where those embodiments are clearly disclaimed in the specification. The Federal Circuit said that the specification states that the tailpiece is formed with or welded to the bottom of the outlet box and surrounds the oblong opening, supporting the patentee's construction of the claims to include the drain ports formed by the oblong opening and the divider. Moreover, the specification explicitly discloses "that if a test cap is not used, the oblong opening in the bottom wall (in conjunction with the tailpiece) may itself define the drain ports." The Federal Circuit created a brand new canon of claim construction: "At lease[sic] where claims can reasonably to interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence on the contrary." The Federal Circuti drew upon three prior cases: 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). The Federal Circuit added: Although the term "first and second juxtaposed drain ports in said bottom wall" defines distinct openings, this does not exclude the distinct openings formed as shown in the structure of Figure 3. The Federal Circuit said that the district court erred in construing claim 1 as excluding this embodiment, which may be true, but the Federal Circuit did not need a new canon of claim construction to get there.