Prosecution History Reveals What the Examiner and Applicant Thought the Claims Meant

Luma Corporation v. Stryker Corporation, [2007-1353, -1378] (April 10, 2008) [LOURIE, Mayer, Schall] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment of noninfringement of claims of U.S. Patent 5,740,801 and of invalidity of certain claims of the patent.
SIGNIFICANCE: Consider all intrinsic sources to construe claims
BRIEF: At issue was whether “graphical objects” included “text objects.” The Federal Circuit began by considering the language of the claims because “the claims themselves provide substantial guidance as to the meaning of particular claim terms.” The Federal Circuit said that the language of claim 14 indicates that “graphical objects” are a subset of the more general category of “visual representations,” and that dependent claim 15 indicates that “text” is also a subset of the category “visual representations.” However the claims did not indicate the relationship between “text” and “graphical objects” so the Federal Circuit turned to the specification, which the court found to be indeterminate as to whether one of ordinary skill in the art would understand “graphical objects” to include text alone. The Federal Circuit noted several passages from the specification which indicated by their grammatical structure that “graphical objects” and “text” are different things. On balance, the Federal Circuit found that the specification supports the district court’s claim construction.Turning to the prosecution history, we find information that is more conclusive that would influence one of ordinary skill in the art’s understanding of “graphical objects.” The prosecution history provides evidence of how the PTO and the inventor understood the patent. The Federal Circuit noted that the Examiner rejected claims to text objects alone, but allowed the claim where text objects were a subset of graphical objects. This indicated to the Federal Circuit that the Examiner clearly understood graphical objects not to include text alone. The Federal Circuit affirmed summary judgment of non infringement, as well as summary judgment of invalidity.