In Continental Circuits LLC v. Intel Corp. No. 2018-1076 (Fed. Cir. Feb. 8, 2019) the Federal Circuit determined the district court erred in its claim construction and explained the high bar that must be met to import limitations from a patent specification to the claims.
Plaintiff Continental Circuits, LLC, (Continental) sued Defendants Intel Corp. et. al., (Intel) for infringement of U.S. Patent Nos. 7,501,582 (“the ’582 patent”); 8,278,560 (“the ’560 patent”); 8,581,105 (“the ’105 patent”); and 9,374,912 (“the ’912 patent”)(collectively “the patents”). The patents are direct toward a “multilayer electrical device . . . having a tooth structure” and methods for making such device. The patents are continuations of each other and share a substantially common specification.
The patents’ specifications describe that the best method for producing the claimed teeth is to perform a double desmear etching process. The specifications specifically point out that the double desmear process differentiates the patents from a single desmear process used in the prior art.
During prosecution of the ‘560 patent, the claims were subject to a rejection for indefiniteness and written description under 35 U.S.C. section 112. In response, Continental submitted an expert declaration explaining that the “etching” process disclosed in the specification uses “known Probelec XB[ ]7081 resin” and “two separate swell and etch steps” as “a technique which forms the teeth.”
Based on the specification describing the double desmear process as being different than the single desmear process of the prior art, and based on the declaration used to overcome the 112 rejection, the district court construed certain elements of the claims (i.e., “surface,” “removal,” or “etching” of the di-electric material) be “produced by a repeated desmear process” even though such repeated desmear process was not recited in the claims. Continental and Intel stipulated to a judgment of noninfringement of the claims as construed by the district court. Continental appealed the claim construction.
Claim terms are construed as having their ordinary and customary meaning. Courts also look to the specification of the patent, the prosecution history, and extrinsic evidence when interpreting the claims. In order for a claim term to have a meaning other than what is ordinary and customary, i.e., for the inventor to act as their own lexicographer, “a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Comput. Entm’t Am. LLC,669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). In addition to acting as their own lexicographer, disavowal of claim scope by the patentee may be indicated by the specification and/or prosecution history. “To disavow claim scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’” Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009)).
Intel argued that the disparagement of the single desmear process in the specification, and that the expert declaration used to overcome the 112 rejection describing the double desmear process, provided that the claims be interpreted to require a double desmear process. In other words, Intel argued that the specification and prosecution history indicated a disclaimer by Continental to products and methods that used a single desmear process.
The Federal Circuit disagreed with Intel and found the district court erred in its claim construction because none of Continental’s statements provide “a clear and unmistakable disclaimer.” Thorner, 669 F.3d at 1367. The Federal Circuit pointed to language in the specification and the expert declaration to support its decision. Specifically, the specification explained that the double desmear process was “[o]ne technique for forming the teeth,” which is “contrary to all known teachings in the prior art,” that “the present invention can be carried out by a new use” of a dielectric material,” and that the process was “an example” of “a way of forming the teeth.” The Federal Circuit viewed these statements as providing for a method of practicing the invention, and not as a clear disavowal of claim scope.
Similarly, the Federal Circuit viewed language in the expert declaration as failing to provide a clear and unambiguous disavowal of claim scope. Specifically, the expert declaration explaining that the specification provides “a technique” for practicing the invention to overcome indefiniteness and written description rejections was not the same as disavowing claim scope.
Ultimately, the Federal Circuit concluded that the claims should not be limited to a double desmear process, vacated the stipulated infringement of the patents, and remanded the case for further proceedings giving the claim terms their plain and ordinary meaning.
Lessons for Practice
Continental provides solid case law and analysis that would be beneficial when arguing against limiting claim construction that is narrower that what is provided under a plain and ordinarily meaning. Further, Continental provides a guide post for drafting and prosecuting applications in situations where an application may desire to disavow claim scope or give a claim term meaning outside of what is plain and ordinary. Specially, such disavowal or definition may be provided with a statement that is clear and explicit. Conversely, where an applicant wishes to rely on plain and ordinary meaning, or does not want to disavow claim scope, broadening language, such as “an example,” “a technique,” etc., may be beneficial.