CAFC Cautions Against Limiting Invention to One Embodiment in the Specification

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Federal Circuit Review No. 75-2.

Federal Circuit Affirms Claim Construction Based on Ordinary Meaning, Cautioning Against Limiting Invention to One Embodiment in the Specification

Imaginal Systematic, LLC v. Leggett & Platt, Inc., No. 2014-1845, 2015 U.S. App. LEXIS 19555 (Fed. Cir. Nov.  10, 2015) (Before Schall, O’Malley, and Moore, J.) (Opinion for the court, O’Malley, J.).  Click Here for a copy of the opinion.

Imaginal sued Leggett & Platt, Inc., (“L&P”) and Simmons, alleging infringement of its patent for a process of building box springs.  In an earlier lawsuit, Imaginal proved that L&P’s TopOff machine for stapling wire grids to frames to make mattress foundations was an infringement. L&P modified its machine, and Imaginal alleged that the redesigned product also infringed its patent. 

Resolution of this appeal turned on the construction of the term “without the use of a vision guidance system.” The district court looked to the ordinary meaning of the words “vision” and “guidance” and construed “vision guidance system” to mean a “system that uses a vision or sight based method to control or direct the movement or direction of something.”  The court rejected Imaginal’s argument that “vision guidance system” should have a narrower meaning, according to the disclosure of another patent (the ’789 patent), incorporated by reference into the patent-in-suit (the ‘402 patent).  Because the accused redesigned TopOff product “uses a vision-based method to control or direct the movement of both the frame/grid and the staplers,” the district court found that it uses a “vision guidance system” and is not “without” such a system.  Accordingly, the redesigned system does not infringe the ’402 Patent.

Imaginal appealed, arguing that the district court improperly construed the disputed claim language, because: because it: (1) ignored the written description and claim language; (2) relied too heavily on general purpose dictionary definitions; and (3) improperly excluded a preferred embodiment.  The Federal Circuit disagreed.  It held that nothing in the patent claims or specification restricted the vision guidance system to only one particular system that is excluded from the claims (“without”). Imaginal’s patent used “vision guidance system” to describe two different systems: one from the incorporated patent and one referring to an embodiment of their invention.  The Court argued that this dual use of “vision guidance system” shows that the patentee did not intend to exclusively refer to, and disclaim, only the vision guidance system of the incorporated patent.  Accordingly, the Federal Circuit affirmed.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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There are currently 1 Comment comments.

  1. Itzik November 23, 2015 8:40 am

    One of the lessons is that when you disclaim, the disclaimed element should be as narrow as possible (to obtain broad protection), and you should have broader definitions of the disclaimed element (in additional claims). This is just as natural as having broad definitions for positive limitations, and narrower ones in additional claims, but somehow, when we claim negatively, we find it difficult.