The Claims Need Not be Construed to Encompass all Disclosed Embodiments When the Claim Language is Clearly Limited to One or More Embodiments

Tip Systems, LLC v. Phillips & Brooks/Gladwin, Inc., [2007-1241, -1279] (June 18, 2008) [PROST, Michel, Pogue] The Federal Circuit finding no error in the district court’s claim construction affirmed summary judgment of non-infringement of two related patents, U.S. Patent Nos. 6,009,169 and 6,512,828 directed to cord-free telephones for use in correctional facilities.
SIGNIFICANCE: The claims need not be construed to encompass all disclosed embodiments when the claim language is clearly limited to one or more embodiments.
BRIEF: The Federal Circuit found no error in the district court’s construction of “handset” to mean “a handle with an earpiece at one end and a mouthpiece at the opposite end.” The Federal Circuit also rejected the patentee’s attempts to read out “handset” from the ‘169 patent based upon its elimination of the term during prosecution of the ‘828 patent. While the prosecution history of a related patent application may inform construction of a claim term, when the two applications are directed to the same subject matter and a clear disavowal or disclaimer is made during prosecution of the related application, the Federal Circuit noted that the specification of the ’828 and ’169 patents were distinct, and that the ‘828 patent did not even use the term “handset” in the specification, so it could hardly inform the meaning of handset in the ’169 patent.
The Federal Circuit also found no error in the district court’s construction of “extending outward from said housing through said aural apertures” in claim 1 of the ’828 patent as meaning “both the earpiece and mouthpiece pass through apertures in the front wall such that they project out from the front wall.” The Federal Circuit rejected the patentee’s argument that through had a functional rather than structure connotation, finding that it would lead to a non-sensical result. The Federal Circuit also had no problem with the fact that the construction did not cover an alternative embodiment, and that “to construe the claim term to encompass the alternative embodiment in this case would contradict the language of the claims.” The Federal Circuit said that the claims of the patent need not encompass all disclosed embodiments, and that its precedent is replete with examples of subject matter that is included in the specification, but is not claimed. Thus, the mere fact that there is an alternative embodiment disclosed but not encompassed by district court’s claim construction does not outweigh the language of the claim. The claims need not be construed to encompass all disclosed embodiments when the claim language is clearly limited to one or more embodiments.
Lastly, the Federal Circuit rejected the patentee’s argument for infringement under the Doctrine of Equivalents. Infringement under the doctrine of equivalents may be found when the accused device contains an “insubstantial” change from the claimed invention. Whether equivalency exists may be determined based on the “insubstantial differences” test or based on the “triple identity” test, namely, whether the element of the accused device “performs substantially the same function in substantially the same way to obtain the same result.” The essential inquiry is whether “the accused product or process contain elements identical or equivalent to each claimed element of the patented invention In other words, the “all elements” rule is applicable to infringement under the doctrine of equivalents just as it is to literal infringement. The Federal Circuit rejected the argument that the separately claimed housing was also the handle, noting that while there need not be a one-to-one correspondence between elements of the accused device and the claimed invention, that does not condone ignoring a claimed limitation in assessing infringement under the doctrine of equivalents. Such a holding would be contrary to the “all elements” rule.