By Kevin M. Repper
In AIA Engineering Ltd. v. Magotteaux Intern. S/A, 657 F.3d 1264 (Fed.Cir.2011), the Federal Circuit overturned a district court judgment of invalidity under the recapture rule of 35 U.S.C. § 251. The court held that the patentee was acting as his own lexicographer, instead of attempting to broaden his own claims, when he repeatedly used the term “solid solution” during patent prosecution.
Magotteaux International was granted aU.S.patent directed to wear products used for crushing and grinding abrasive materials. Consistently throughout the prosecution of the patent, the patentee used the claim language “ceramic pads consisting of a homogenous solid solution of 20-80 percent aluminum oxide and 80-20 percent zirconium oxide.” Magotteaux later applied for reissue to change “consisting of” to “comprising” and “solid solution” to a “ceramic composition.” The reissue patent was granted.
A year later, AIA Engineering sued Magotteaux in the U.S. District Court for Middle District of Tennessee. AIA sought declaratory judgment of noninfringement, invalidity, and unenforceability of the reissue patent while Magotteaux countered for patent infringement. The Judge for the District court ruled in favor of AIA for the motion for summary judgment of invalidity. The Judge found that the substitution of “ceramic composite” for “solid solution” broadened the scope of the claim and that Magotteaux relied on the “solid solution” to overcome the prior art.
The Federal Circuit Judge reversed this ruling, citing the three-step test for applying the recapture rule: “(1) first we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.” Medtronic Inc. v. Guidant Corp., 465 F.3d 1360, 1373, 80 USPQ2d 1558 (Fed. Cir. 2006).
The Federal Circuit concluded that the language “solid solution” and “ceramic composite” were synonymous in light of the specification, prosecution history, and extrinsic evidence. Therefore, the court did not need to reach the third step in determining the recapture rule.
The two constituent materials of the patent, aluminum oxide and zirconium oxide, retain a distinct composition and/or crystal structure. Both parties agreed that the ordinary meaning of “solid solution” would require a “single, uniform crystalline structure.” Therefore, it would have been impossible to make an alumina-zirconia “solid solution” as disclosed in the original claims. The court concluded, however, that because the applicant repeatedly disclosed “solid solution” in the specification, the applicant acted as his own lexicographer, providing a special definition for the term that was a synonym for “homogeneous ceramic composite.”
The court used both extrinsic and intrinsic evidence to determine the outcome of the case. First, it was determined that solid aluminum oxide and solid zirconium oxide do not share a common crystal structure at any temperature. Therefore, the impossibility of the solid solution of the original claim would have been apparent to one of ordinary skill. The court concluded that when the specification discloses a special meaning for a term that ultimately differs from the common meaning, the special meaning governs, “particularly when it also serves to avoid an inoperable claim construction.”
The Federal Circuit overturned the District Court by determining the meaning of “solid solution” as it pertains to the specific patent. The court concluded by the extrinsic evidence that it would be impossible for a “solid solution” to be incorporated into the claims. The court examined the intrinsic evidence to determine how the “solid solution” was defined in the specification. The court concluded that although a “solid solution” and a “ceramic composite” may not mean the same thing to one of ordinary skill, the two terms were synonymous in light of the specification.
The District Court failed to observe the intrinsic evidence for the definition of “solid solution” within the specification and therefore failed to determine that “solid solution,” as defined by the specification, was synonymous with “ceramic composite.”
AIA Engineering Ltd. v. Magotteaux Intern highlights that a common definition of language in the claim is overshadowed by a special meaning of the language in the specification. As demonstrated, this allows an invalid claim (due to common definitions of the language in the claim) to be valid, as long as a special meaning of the claim language in the specification is enabling.