Avoid Claim Limitations That Suggest How the Element is Made

Miken Composites, L.L.C., v. Wilson Sporting Goods Co., [2006-1628] (February 6, 2008) [LINN, Newman, Schall] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 5,415,398.
SIGNIFICANCE: Don't claim a structure with a functional term when you don't want to be limited to the function.
BRIEF: The patent was directed to a bat, comprising: a hollow tubular bat frame and an insert positioned within the frame. At issue wsa the meaning of "insert", as defendant's device had an inner element around which the outer element was formed. Miken argued that its inner element was not an insert, because it was not "inserted" into anything. A determination of non-infringement, either literal or under the doctrine of equivalents, is a question of fact. Thus, on appeal from a grant of summary judgment of non-infringement, we must determine whether, after resolving reasonable factual inferences in favor of the patentee, the district court correctly concluded that no reasonable jury could find infringement. The Federal Circuit noted that nothing in the claims or specification indicates, explicitly or implicitly, that the inventor used the term insert in a novel way or intended to impart a novel meaning to it. To the contrary, the claims and written description of the patent consistently used the term "insert" in the sense of its ordinary meaning as "something inserted or intended for insertion. The Federal Circuit said that had the patentee, who was responsible for drafting and prosecuting the patent, intended something different, it could have prevented this result through clearer drafting. The issue would have been different if the claims contained the language argued in Wilson’s briefs, but they do not. It is the language of the claims not the argument that governs.
The Federal Circuit also saw no reason to depart from the ordinary meaning of the terms, noting that in Nystrom, it held that the broadening of the ordinary meaning of a term in the absence of support in the intrinsic record indicating that such a broad meaning was intended violates the principles articulated in Phillips v. AWH. Based on Phillips, a claim term should not be read to encompass a broader definition "in the absence of something in the written description and/or prosecution history to provide explicit or implicit notice to the public—i.e., those of ordinary skill in the art—that the inventor intended a disputed term to cover more than the ordinary and customary meaning revealed by the context of the intrinsic record." The Federal Circuit affirmed the judgment of non-infringement.