Posts Tagged: "disavowal of claim scope"

UltimatePointer argued that the district court improperly construed “handheld device” to require direct pointing, because there was no disavowal or lexicography in the specification to exclude indirect pointing. Nintendo argued that the specification extols direct pointing and repeatedly criticizes indirect pointing. The Court agreed, holding that repeated characterization of the invention as a “direct pointing system,” repeated descriptions of the advantages of direct pointing, and repeated disparagement of indirect pointing all indicate that the term “handheld device” should be limited to direct pointing devices.

‘Broad’ in this context means ‘broadest supportable’ coverage, limited only by the technology in terms of supportability and by the prior art in terms of outer reach. A failure to achieve such breadth is generally attributable to overclaiming, where one runs afoul of the prior art; underclaiming, where the drafter stop short of claiming all he could; or faulty claiming, where the drafter attempts to achieve breadth, but support issues or drafting errors restrict claim scope. Sound principles, instilled by effective training, cannot substitute for adequate knowledge of the prior art. They can provide the knowledge and thus the confidence to claim out to the limits defined by that art.