Federal Circuit Finds Specification Precludes Narrow Claim Interpretation

In Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246; 97 U.S.P.Q.2D 1811 (Fed. Cir. 2011), Arlington Industries is the owner of U.S. Patent No. 5,266,050 (hereinafter the ‘050 patent) and U.S. Patent No. 6,521,831 (hereinafter the ‘831 patent).  The ‘050 patent relates to an electrical connector that snaps into electrical junction boxes, whereas the prior art connector required a threaded nut which required two hands to install.  The claimed electrical connector only required one hand, and recites, among other features “a circular spring metal adaptor” in claim 8 of the ‘050 patent and “a tubular spring steel adapter” in claim 1 of the ‘831 patent.

Arlington Industries filed suit in the Middle District of Pennsylvania against Bridgeport Whipper-Snap alleging one set of products infringe claim 8 of the ’050 patent (herein after “Arlington I”).   Arlington Industries later filed a second suit against Bridgeport Whipper-Snap in the Middle District of Pennsylvania  alleging another set of products infringed claim 8 of the ’050 patent and claim 1 of the ‘831 patent (hereinafter “Arlington II”).  In its claim construction, the District Court in Arlington I found that the recited spring metal adaptor of claim 8 did not require the ring to be split but instead be made of a spring metal.  In contrast, the District Court in Arlington II found that the recited spring metal adaptor of claim 8 of the ‘050 patent as well as the spring steel adapter of claim 1 of the ‘831 patent both required that the adapter be split.  Based upon this claim construction, Bridgeport moved for summary judgment in Arlington II since the allegedly infringing products did not include a split.  The District Court in Arlington II granted the motion.

While neither Arlington I nor Arlington II were combined, the District Court in Arlington I agreed to stay the Arlington I proceedings while the Arlington II was on appeal.

On appeal, the Federal Circuit began by noting that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).  Moreover, the Federal Circuit held that the recited “spring metal adaptor” of claim 8 of the ‘050 patent has an ordinary and customary meaning which is consistent with the specification: the adaptor is made of spring metal.  The specification specifically refers to adapter as being formed of spring metal.  As such, the Federal Circuit found that the “spring metal adaptor” of claim 8 must be made of a spring metal.

In supporting the Arlington II District Court’s claim construction, Bridgeport indicated that the term “spring” required that the metal adapter perform a springing function, which would require a split.  Bridgeport pointed to the drawings of the ‘050 patent, all of which include the metal adapter having a split.  In declining to adopt this interpretation, the Federal Circuit again noted that the specification defined the metal adapted as being made of a spring metal, such that the term “spring metal adapter” would refer to the material of the adapter.  Moreover, the Federal Circuit noted that the drawings to a single embodiment do not represent a limitation which is imported into the claim.

Importantly, the Federal Circuit held that allowing such an interpretation would go against the ordinary meaning as well as the findings of the Arlington I court.  Specifically, the Federal Circuit quoted Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1329 (Fed. Cir. 2008) for the proposition that, “[i]n the interest of uniformity and correctness, this court consults the claim analysis of different district courts on the identical terms in the context of the same patent.” Thus, the Federal Circuit rejected the notion that the spring limitation meant a springing function as being contrary to both the ordinary meaning as understood from the specification as well as contrary to a predecessor court decision.

Alternately, Bridgeport indicated that the split was implicitly required even if the term “spring metal adapter” was limited to an adapter made of a spring metal.  However, the Federal Circuit declined to implicitly require the spring metal adapter having the split.  Specifically, the Federal Circuit noted that, while one embodiment shown in the drawings had a split, three other embodiments did not.  Also, the Federal Circuit noted that other claims expressly recite a split such that implicitly requiring the split would run contrary to the doctrine of claim differentiation.  Moreover, the Federal Circuit noted that in a rejection of a claim in the parent application for the ‘050 patent, the applicants specifically amended a claim by including a split feature which was evidence in the prosecution history that the recited spring metal adapter did not necessarily include a split.  While acknowledging that there is a fine line between reading a claim in light of the specification and importing a feature into a claim using the specification, the Federal Circuit determined that the overall facts indicated that there was no intent to implicitly require that the split metal adapter always require the split.  As such, the Federal Circuit found that neither claim 1 of the ‘831 patent nor claim 8 of the ‘050 patent required a split, and reversed the District Court.

Significance for Patent Applicants

Arlington Indus provides yet another reminder as to why it is important to ensure that multiple embodiments are disclosed for a claimed invention.  By including multiple examples within a genus of a claim feature, courts are more likely to give a broader reading by not insisting that the claim can only be commensurate in scope with a single embodiment.  Moreover, the use of claims of varying scope will further help ensure this broad interpretation.  As such, applicants need to ensure that, at the time of filing, applicants have provided as many examples as possible or risk having the claims narrowed to meet the single disclosed example.

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