Proper Claim Construction Can Exclude Preferred (And Only) Embodiment

Lucent Technologies, Inc., v. Gateway, Inc., [2007-1334, -1337, -1376] (May 8, 2008) [PROST, Lourie, Linn] The Federal Circuit vacated summary judgment of non-infringement of the ’131 patent and remanded, but affirmed construction of “each successive iteration including the steps of” and summary judgment of non-infringement of the ’954 patent.
SIGNIFICANCE: Where meaning of claim is clear, it will not be reconstrued to cover preferred (and only) embodiment
BRIEF: The Federal Circuit considered the meaning of “terminal device.” The Federal Circuit agreed that the specification did not support the district court’s construction, and rejected the argument that Lucent disavowed a broader scope during prosecution. The Federal Circuit acknowledged that “a clear and unmistakable disavowal of scope during prosecution” may affect the construction of a claim term.” But agreed that the prosecution did not contain a clear disavowal.
Regarding the ‘954 patent, the district court construed the phrase “each successive iteration including the steps of” to require that “all of the steps following this clause [steps 1-5] must each be performed in forming each pulse.” The Federal Circuit agreed that the plain meaning of the claim language supports the district court’s claim construction requiring performance of all of steps 1-5 during each pulse-forming iteration. This court has consistently interpreted “including” and “comprising” to have the same meaning, namely, that the listed elements (i.e., method steps) are essential but other elements may be added.
Lucent argued that the district court’s claim construction was erroneous because it excluded the preferred embodiment. Defendants conceded that there is no support in the specification for the construction adopted by the district court, but argued that the claims were clear as to the meaning of the phrase and that there is no need to resort to the specification. Defendants argued that Dell and Microsoft both argue that although a claim construction that excludes a preferred embodiment is rarely correct, it may be correct when the claim is plain on its face. The Federal Circuit agreed that the district court’s construction of the phrase was not supported by the sole embodiment described in the specification. Nevertheless, the claim language clearly supports the district court’s claim construction. The Federal Circuit noted that it had repeatedly held that courts may not redraft claims to cure a drafting error made by the patentee, whether to make them operable or to sustain their validity. Redrafting claims “would unduly interfere with the function of claims in putting competitors on notice of the scope of the claimed invention.” While it is true that we may construe claims to sustain their validity when the claims are amenable to more than one reasonable construction; when the claims are susceptible to only one reasonable construction, we will construe the claims as the patentee drafted them. Where we conclude that the claim language is unambiguous, we have construed the claims to exclude all disclosed embodiments.
The Federal Circuit also agreed that plaintiffs were barred from asserting infringement under the doctrine of equivalents because of prosecution history estoppel.