Claims Don't Have to Be Construed to Cover All Embodiments

General Atomics Diazyme Laboratories Division, v. Axis-Shield ASA, [2007-1349] (May 12, 2008) [LOURIE, Gajarsa, Dyk] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patents 5,631,127 and 5,958,717 relating to methods and kits for assaying homocysteine in a sample such as blood, plasma, or urine.
SIGNIFICANCE: Claims need not be construed to cover all embodiments.
DISCUSSION: At issue was the meaning of homocysteine conversion products. To determine the proper meaning of “homocysteine conversion products,” the Federal Circuit said that it need do little more than to look to the language of the claims. The Federal Circuit said that the claim language indicates that the “products” are those products that result from the conversion of homocysteine. And not just any product resulting from the homocysteine conversion reaction.
The Federal Circuit noted that had the claim been written as “homocysteine conversion reaction products,” or “products of the homocysteine conversion reaction, a different construction might be more tenable.In addition to the clear guidance provided by the claim language, we may also turn to the specification to determine whether the patentee attributed a different meaning to the term. The Federal Circuit noted that the term was not used in the specification, but that the district court’s claim construction tracked the first embodiment disclosed in the specification. The Federal Circuit was not persuaded by the fact that the construction did not cover other embodiments, noting “A claim need not cover all embodiments in a patent specification.” The Federal Circuit said that prosecution strategies may evolve so that some embodiments are covered in a patent and others are not.
The Federal Circuit affirmed the district court’s claim construction, and thus the grant of summary judgment of non-infringement.