Summary of Invention Has More Bite than Detailed Description

PSN Illinois, LLC, v. Ivoclar Vivadent, Inc. [2007-1512] (May 6, 2008) [MICHEL, Linn, Prost] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 4,579,530 which claims a method of fabricating porcelain veneers for teeth, even though the district court incorrectly construed the claim.
SIGNIFICANCE: Broad Summary of the Invention can support broader claim interpretation than the preferred embodiment.
BRIEF: At issue was the meaning of the claim term “ready for mounting”. The Federal Circuit observed that it determines the ordinary and customary meaning of undefined claim terms as understood by a person of ordinary skill in the art at the time of the invention, using the methodology in Phillips v. AWH Corp. The district court construed “ready for mounting” as “leaving the veneer restoration ready to be fitted to and cemented on a patient’s tooth for which it
was custom-made.” The Federal Circuit said the claim language itself provides no guidance as to what is meant by “ready for mounting,” and the specification provides no explicit definition for “ready for mounting.” Nevertheless, the specification illuminates the proper construction of the term. In the summary of the invention section, the specification teaches that some finishing steps may be performed after the statue is eroded. Based on the description of a preferred embodiment and particularly on the statement in that section that the support provided by the statue during finishing is “a feature of this invention,” the district court construed “ready for mounting” excluded subsequent finishing steps. When read in context of the claim language and the specification, the Federal Circuit found that the district court was incorrect in holding that the description of a preferred embodiment had more “bite” than the description in the summary of the invention. Despite this prosecution history, the description in the summary of the invention and expert witness testimony support the conclusion that a person of ordinary skill in the art would understand that a veneer was “ready for mounting” after statue removal even if some “finishing” operations still needed to be performed.
Even though the Federal Circuit held that the district court got the claim construction wrong, the Federal Circuit found that under the correct construction, a veneer must be “substantially fabricated” to be “ready for mounting” and the accused product was not “substantially fabricated” as sprues remained to be removed.
The Federal Circuit found that there was no infringement under the Doctrine of Equivalents, because such a finding of infringement would read the “ready for mounting” limitation out of the claim. Under the all-elements rule, “an accused product or process is not infringing unless it contains each limitation of the claim, either literally or by an equivalent “[A]n element of an accused product or process is not, as a matter of law, equivalent to a limitation of the claimed invention if such a finding would entirely vitiate the limitation.” To determine whether finding infringement under the doctrine of equivalents would vitiate a claim limitation, courts consider the totality of the circumstances, evaluating “whether the alleged equivalent can be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent limitation meaningless.”