Federal Circuit Defines Partially Hidden To Not Include Completely Hidden

In Helmsderfer v. Bobrick Washroom Equipment, Inc., No. 2008-1027 (Fed. Cir. June 4, 2008), John A. Helmsderfer and Brocar Products (collectively “Brocar”) owns U.S. Patent No. 6,049,928 (the ‘928 patent). The ‘928 patent is directed to baby diaper changing stations that are resistant to vandalism, making them especially suitable for use in public restrooms.

Brocar filed suit in the District Court for the Southern District of Ohio against Bobrick Washroom Equipment, Inc., BWA South Company, Inc., Target Sales and Marketing, LLC, and Patterson Case Associates, Inc. (collectively “Bobrick), alleging that Bobrick’s stainless steel baby changing stations infringed claims 6 and 7 of the ‘928 patent.

Upon a Markman hearing in August 2007, the District Court entered a judgment of noninfringement based on its construction of the claim term “partially hidden from view,” which refers to the platform top surface when the table is in its closed position, folded up against the wall. The District Court construed the term as “hidden from view to some extent but not totally hidden from view.” Brocar appealed this claim construction to the Federal Circuit.

On appeal, Brocar contended that the District Court erred in that term should have been defined as “positioned so at least some of the top surface is blocked from being seen,” so as not to exclude totally hidden from view.

The Federal Circuit noted that a claim term will be taken to carry its plain meaning unless the patentee acts as its own lexicographer and assigns to the term a unique definition that is different from its ordinary and customary meaning and clearly expresses this intention in his written description.

Brocar did not claim that it acted as its own lexicographer.  Instead, Brocar argued that the plain meaning of “partially” includes completely. As evidence, Brocar asserted that the written description of the top surface as “generally hidden from view” supports its proposed construction. However, the Federal Circuit noted that different claim terms are presumed to have different meanings. Applied. Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006); CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000). There was no evidence that the terms have the same meaning to rebut the presumption.  As such, Brocar could have used “generally hidden from view” rather than “partially hidden from view” to describe the platform top surface, and the terms would not be construed to have the same meaning.

Brocar also argued that the District Court gave too much weight to extrinsic evidence in claim construction.  In rejecting this argument, the Federal Circuit held that a court may look to extrinsic evidence so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record. See Intel Corp. v. VIA Techs., 319 F.3d 1357, 1367 (Fed. Cir. 2003). Here, the meaning was not apparent from the intrinsic record because the specification did not define “partially.” Therefore, it was appropriate for the District Court to look to dictionaries for context.  Further, the Federal Circuit agreed that the three dictionaries that it cited clearly contrast Brocar’s definition of “partially.”

Also, Brocar noted that the claim construction would exclude the preferred embodiment.  Citing Primos Inc. v. Hunter’s Specialties Inc., 451 F.3d 841, 848 (Fed. Cir. 2006) and Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996), the Federal Circuit agreed that caselaw does generally prefer that the claim construction encompass the preferred embodiment.  However, the Court noted that various non-asserted claims do encompass the preferred embodiment such that it is only claims 6 and 7 that do not encompass the preferred embodiment.  As such, the Court found that the difference in language deliberately did not encompass the preferred embodiment so as to allow claims of varying scope.

Lastly, the Federal Circuit noted that courts may not rewrite claim language; they must give effect to the terms chosen by the patentee. Tex. Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993). Therefore, the Federal Circuit affirmed that the ordinary and customary meaning of the term “partially” excludes “totally,” and that the District Court was correct in construing the term “partially hidden from view” to mean “hidden from view to some extent but not totally hidden from view.”

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